v Group Pty Ltd v Virgin Enterprises Limited - [2011] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by V Group Pty Ltd to registration of trade mark application 1227587 (41, 43) - CLUB V - filed in the name of Virgin Enterprises Limited.

Delegate:

Michael Kirov

Representation:

Opponent: Richard Lancaster SC, instructed by Melanie Plant and Alison Kennedy of Thomas Mitchell solicitors

Applicant: Andrew Fox of Counsel, instructed by Karen Hane of Addisons Lawyers

Decision:

2011 ATMO 108

s 52 opposition – sections 43, 58 and 60 pressed – parties’ trade marks substantially identical but Opponent unable to establish first use or the requisite reputation – no relevant connotation in the opposed trade mark – opposition not established. Costs awarded against the Opponent.

Background

This is an opposition brought by V Group Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of application number 1227587 in the name of Virgin Enterprises Limited (“the Applicant”).
Details of the opposed application are as follows:

Application Number: 1227587

Priority Date: 4 March 2008

Services:Class 41: Health and fitness services; sporting and cultural activities; (operation of) leisure centres, fitness centres, gyms and health clubs; providing recreation facilities; physical education; providing recreation activities
Class 43: Childcare services; children's playgroups; day nurseries (creches); holiday camp services; cafeterias

Trade Mark: CLUB V

I refer hereafter to the opposed trade mark as “the Trade Mark” and to the services covered by application 1227587 as “the Services”.
The Opponent filed its Notice of Opposition (“the Notice”) on 22 October 2008.
The parties lodged Evidence in Support and Evidence in Answer as set out below:

Evidence in Support

▪Statutory Declaration by Selena Short made 4 December 2009, with Annexures A to H and J to P (“Short 1”)

▪Statutory Declaration by Selena Short made 25 January 2010, with Annexures A and B (“Short 2”)[1]

▪Statutory Declaration by Selena Short made 11 February 2010, with Annexures A to E (“Short 3”)

[1] Short 2 is redundant and is not relied upon by the Opponent, having effectively been replaced by Ms Short’s declaration of 11 February 2010.

Evidence in Answer

▪Statutory Declaration by Lavinia Jeanne Strachan made 15 November 2010, with Exhibits LJS-1 and LJS-2

▪Statutory Declaration by Ian David Tuckey made 15 December 2010, with Exhibits IDT-1 to IDT-3

▪Statutory Declaration by Susan Louise Darmopil made 17 December 2010, with Exhibits SLD-1 and SLD-2

▪Statutory Declaration by Mark Andrew Blackman made 26 December 2010, with Exhibits MAB-1 to MAB-14

▪Statutory Declaration by Karen Anne Hayne made 4 January 2011, with Exhibits KAH-1 to KAH-13[2]

[2] Exhibit KAH-3 is a copy of a Statutory Declaration by Mark James made 22 September 2010 with Exhibits MJ-1 to MJ-3 and Exhibit KAH-10 is a copy of a Statutory Declaration by Brett Raymond Volker made 1 December 2006.

The Applicant, a UK company, is one of a number of companies collectively known as the “Virgin Group”, whose Chairman is the UK entrepreneur and businessman Sir Richard Branson. It is the owner of several thousand registrations around the world for, inter alia, trade marks featuring the word “virgin”, or featuring a stylized rendition of the letter “V”, or featuring the letter “V” in combination with other material. It licenses use of these trade marks to other businesses both within and outside the Virgin Group in relation to a very wide range of goods and services including passenger and freight airline services, publishing services, retail services, financial services and mobile telephone services, to name but a few. Since 1999 companies within the Virgin Group have operated health and fitness centres in the UK and elsewhere with ancillary facilities such as pools, spa pools, cafes and children’s areas and the first such centre was opened in Australia on 15 December 2008. The children’s areas in these centres are marketed under the Trade Mark.
The Opponent, through its wholly owned subsidiary V Club Pty Ltd (“the Opponent’s subsidiary”), has operated a health and fitness centre in the Sydney CBD under the name/trade mark “V Club” since around May 2007. At the heart of this opposition is the obvious similarity between this name/trade mark and the Trade Mark and the likelihood of confusion ensuing as a result of their concurrent use.
I heard the matter as delegate of the Registrar of Trade Marks on 8 August 2011 in Sydney. Richard Lancaster SC, instructed by Melanie Plant and Alison Kennedy of Thomas Mitchell solicitors, appeared for the Opponent. Andrew Fox of Counsel, instructed by Karen Hayne of Addisons Lawyers, appeared for the Applicant. The parties’ oral submissions before me were supplemented by written submissions exchanged immediately prior to the hearing.

Grounds of Opposition and Onus

The Notice nominated three grounds corresponding to ss 43, 58 and 60 of the Act and all were pressed at the hearing. These are discussed below in the order presented by Mr Lancaster.
I confirm I am proceeding on the basis that the Opponent bears the onus of establishing at least one of the grounds nominated in the Notice on the balance of probabilities[3] and that the relevant date at which the rights of the parties are to be determined is the 4 March 2008 filing date of the opposed application (“the Priority Date”)[4].
[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 per Kitto J at 595.

The Evidence

The Opponent’s case turns on its claimed use of trade marks[5], to which it says the Trade Mark is substantially identical or deceptively similar, for services the same as, or similar to, at least some of the Services. In particular, the Opponent claims it first used its relevant marks in relation to a health and fitness facility before the Applicant’s first use of the Trade Mark and that those trade marks had developed a significant reputation in the marketplace by the Priority Date. It is accordingly critical to identify the nature and extent of the parties’ use of their respective marks prior to 4 March 2008.
[5] The actual user of the relevant trade marks is the Opponent’s subsidiary, but unless the context demands otherwise I will for convenience hereafter refer to this authorised use as use by the Opponent.
The Opponent’s evidence is contained in Short 1 and Short 3, Selena Short being the sole director of both the Opponent and the Opponent’s subsidiary. As far as relevant to this matter, I summarise her evidence below. In doing so, I note that it is at times difficult, if not impossible, to identify the particular trade mark or trade marks Ms Short variously refers to in Short 1 as “the mark V Club and logo” (paragraph 8), “the marks for V Club, V Group, V Yoga, V Fitness and V Spa” (paragraph 9), “the V Box logo” (paragraph 10), “the mark ‘V Club’ and related logo developed by Billy Blue Creative” (paragraph 12), “the V Club mark” (paragraphs 14, 18 and 19), “the mark” (paragraphs 15 and 16) and in paragraph 17 alone as “the V logo”, “the V Club brand”, “the logo V box”, “the V Club box” and “the V Club logo”. I have accordingly been forced at times to make an educated guess as to her intended meaning based on the totality of her evidence. In this regard and relying in particular on the material contained within Annexures N, O and P to Short 1, I have concluded that her evidence relates to several different trade marks, the most relevant of which I will hereafter refer to as indicated in the following table:

V Club

V CLUB

or V club

“the V CLUB Word Mark”

“the V Logo”

“the V club Logo”

I mention that the examples of the V Logo in use which are annexed to Short 1 almost invariably show use of the logo, or a truncated portion of the logo, with various human figures placed within, on or next to the logo itself and with a range of slogans placed above or below the logo, including “Value Your Health”, “Escape to Create”, “Your Body is Your Temple”, “One Mind One Body One Life”, “Your Body is a Temple”, “Love Your Life”, “Embrace Your Day”, “Feel the Difference”, “Balance your lifestyle”, “Make Everyday Count” and, most commonly, “One Body One Life”. In this regard Ms Short says that, “All branding for V Club works off [the V Logo] where the box acts as the platform for heroes, hence the image of a person standing or jumping above [the V Logo]”. Where necessary I will refer hereafter to these combination trade marks collectively as “the V Logo & Slogan Mark(s)”.
That said, the evidence in Short 1 is that:

The Opponent and the Opponent’s subsidiary were incorporated on 6 September 2006 and 4 May 2007 respectively.
“In 2006” the Opponent says it “established the business ‘V Club’ at 48 Druitt Street, Sydney” (“the Druitt Street Premises”). The business is “a health and fitness centre which provides facilities including dance, yoga, martial arts, fitness and personal training” operated by the Opponent’s Subsidiary (“the Business”).
In particular, on some (unspecified) date in 2006 the Opponent and the owner of the Druitt Street Premises (“Henroth”) executed a “Deed of Agreement for Lease”, pursuant to which, inter alia, the Opponent agreed to “engage a consultant to prepare [detailed plans of its intended fit-out works and of any necessary development application]”. For its part, Henroth agreed to undertake certain preparatory works at the Druitt Street Premises and to then enter a formal lease for the premises with the Opponent intended to commence from 1 May 2007 and which, in the event, commenced on 12 June 2007.
“In September 2006 [the Opponent] engaged Billy Blue Creative Ltd (“BBC”) to assist in developing the logo and branding for [the Business].” (By the end of October 2006 BBC appears to have come up with several suggested logos, including the V Logo, each of which is accompanied by the letter/word combinations V GROUP, V YOGA, V SPA or V FITNESS).
“In November, 2006 [the Opponent] engaged Bread and Butter [Research & Planning] to assist … with these concepts. [The Opponent] revised [its] concept to include Fitness, Dance and Martial Arts along with the Yoga concept. This research identified [the V Logo] was the preferred mark.”
“In April, 2007 [the Opponent] engaged Red Razoo, a marketing consultancy agency to design the branding and marketing concepts for the new club based on the mark ‘V Club’ and related logo developed by [BBC][6].” Red Razoo “was engaged on a One Year contract … to develop [the Opponent’s] initial launch strategy, design and implement all branding and marketing materials including signage, website, advertisements, merchandise, flyers and to create public awareness and exposure in the market place.” Annexure L to Short 1 shows “examples of the marketing materials produced”.
[6] At the hearing Mr Lancaster indicated his understanding that by the words “the mark ‘V Club’” Ms Short was referring to the plain letter/word combination I have defined in paragraph 12 as the V CLUB Word Mark. Because, according to Ms Short’s evidence, BBC apparently proposed several possible logos (none of which in evidence accompanies the word “club”), it is impossible to know what particular logo she is referring to at this point, although I am assuming she means the V Logo as defined in paragraph 12 of this decision.
The “marketing materials” comprising Annexure L appear to be copies of flyers promoting the Business, albeit no information is provided as to how, when and in what numbers they may have been distributed to the public. In all cases the materials in question refer to an “OPENING SPECIAL” and urge the reader to take up the offer before some given date in 2007, from which I deduce the earliest of the annexed flyers were printed in May 2007. With one exception, the flyers prominently feature what I described in paragraph 13 above as the V Logo & Slogan Marks. In one example only, (which notes that the Business won a “Best of Sydney” award in 2008 and was obviously therefore not produced prior to 2008), the V club Logo appears.
Additionally, copy contained in some of the flyers refers to the Business as “V Club” or simply “V” in lines such as “Introducing V. More than just a club it’s a lifestyle”, “At V your health is everything.”, “Make V part of your core strength” and “Visit your V Club at 48 Druitt Street, Sydney”. Also shown in the flyers is the web address < although no information is provided by Ms Short as to when the corresponding website was first launched.
“The use of the V Club mark has been in continuous use from May, 2007 to the present” (sic) and “the mark is featured in our Club signage outside our Kent Street premises[7]”. (It is unclear to me what Ms Short means by “the V Club mark” here and from this point on. However, I am forced to conclude she is referring collectively to any mark which contains or consists of the V Logo defined in paragraph 12 above (that is, any of the marks I identified in paragraphs 12 and 13 above other than the V CLUB Word Mark) since she then goes on to say, “The mark appears in all our marketing and club materials including our website, merchandise, on all membership materials, membership cards, uniforms and badges, contracts and stationary (sic) and has since May, 2007”. She then refers to Annexure N as being “photographs of some of the merchandising and cards which prominently feature the V Club mark” and these materials show the V Logo used sometimes alone, sometimes with the word “club” below (that is, what I have defined above as the V club Logo), sometimes with the letter/word combination “V Club” below, sometimes with the words “One Body One Life” either below, or written on, the V Logo. I note there is no indication as to when these various materials were produced or distributed, except in the case of the “Membership Cards” reproduced in Annexure N, with the cards for “2007-2009” bearing the V Logo with no accompanying words and the card for “2009” bearing the V club Logo.)
“The [V Logo, with or without accompanying words and/or human figures] has been used extensively in our advertisements.”
“The [V Logo, with accompanying words and/or human figures] features in our print, TV, flyer and electronic advertising…”. Annexure P to Short 1 comprises “various examples from the print media and website which feature the [V Logo, with accompanying words and/or human figures]. (I mention that this is the sole reference in the Opponent’s evidence to “TV advertising” or “electronic advertising”. A one page printout from the website < printed on 20 November 2009 and bearing a copyright notice dated “2009”, that is after the Priority Date, is included in Annexure P. Of the remaining material in this Annexure, consisting of copies of nine newspaper/magazine advertisements and two newspaper articles, some are undated or dated after the Priority Date. The others appear to have been published in June or July 2007 and indicate the Business commenced trading in late May or early June 2007.)
“The Opponent has spent [a certain sum] on advertising since 2006.” (Ms Short does not say how much may have been spent prior to the Priority Date.)
“V Club had 3,900 active members as at October, 2009 and has had over 18,000 Guests at V Club since opening in May, 2007”. (sic) (Ms Short does not provide any figures for the position at the Priority Date.)
[7] I am assuming here that Ms Short is in fact referring to the Druitt Street Premises, since there is no evidence before me of any other premises used by the Business.

Short 2, for its part, provides figures for the “operating deficit” of the Opponent’s subsidiary for the 2006/2007 financial year and for its “annual turnover” for the subsequent two years. Additionally, Ms Short says that, “The V Club mark and V Club logo have been in continuous use since the commencement of trading in May 2007”. (I mention that I am unable to say what the precise trade marks Ms Short is referring to here are, but that I am assuming these to be the V CLUB Word Mark and any mark which contains or consists of the V Logo, as defined in paragraph 12 above.)
The key matters I take from Ms Short’s evidence as far as the present opposition is concerned are that:

It was not until some time after the marketing firm Bread and Butter was engaged “in November 2006” that the V Logo (or for that matter any trade mark featuring the single letter “V”) was “identified [as] the preferred mark”;
It was not until April 2007 that the Opponent then engaged the marketing firm Red Razoo “to design the branding and marketing materials concepts for the new club based on [the V CLUB Word Mark] and [the V Logo]” and “to develop [the] initial launch strategy, design and implement all branding and marketing materials including signage, website, advertisements, merchandise, flyers and to create public awareness and exposure in the market place”;
It was not until May 2007 that the earliest examples of relevant publicity materials in evidence appear to have been produced;
The Business commenced trading at the Druitt Street Premises in late May or early June 2007, with the formal lease for the premises commencing on 12 June 2007.

For the purpose of the discussion which follows I consider the most significant evidence from the Applicant is contained in the declarations by Ian David Tuckey and Mark Andrew Blackman.
Mr Tuckey was a property and development consultant with Virgin Management Asia Pacific Pty Ltd (“VMAP”) from October 2006 and became National Property and Development Manager with Virgin Active Australia Pty Limited (“VAA”) in January 2008. These two companies, as well as the Applicant, are part of Sir Richard Branson’s “Virgin Group” and are authorised by the Applicant to use the Trade Mark. In his roles with the Virgin Group Mr Tuckey “[is] and was responsible for overseeing the real property dealings of VMAP and VAA throughout the Asia Pacific region, including the sourcing of sites for potential ‘Virgin Active’ and other Virgin Group businesses and the development of premises on those sites”.
I mention that I understand from the totality of Mr Tuckey’s evidence that “Virgin Active” is the trading name of a health club business operated by companies within the Virgin Group. The first Virgin Active health clubs opened in the UK in 1999 and in South Africa in 2001 and had opened in Italy and Spain by 2005. As at January 2007, there were some 165 Virgin Active health clubs in the UK, Spain, Italy and South Africa with more than 900,000 members.
Mr Tuckey says that “in or about October 2006” one of his first tasks was “to source appropriate development opportunities in the Australian property market for the Virgin Group’s Virgin Active health clubs”. This initially involved him sending “introductory letters and information booklets describing the Virgin Active health club facilities and setting out the property requirements…to all major real estate agents and property developers on the Australian eastern seaboard”. He says the letters and booklets were sent “during the period commencing on or about 15 October 2006 through to June 2007, initially in a concentrated burst”, and he exhibits one such letter dated 7 December 2006 addressed to the Divisional Leasing Managers of AMP Capital Investors in Sydney.[8]
[8] Mr Tuckey does not explain why none of the letters he apparently sent between 15 October 2006 and 7 December 2006 is exhibited.

Mr Tuckey says this 7 December 2006 letter is typical of the approximately 60 letters he sent between October 2006 and June 2007 to Australian property developers and real estate agents, “including but not limited to: Ray White Retail; Ray White Commercial; Grant Samuel; KWC Capital Partners; Bovis Lend Lease; Laing + Simmons Commercial; Beville Group; FDC Construction & Fitout; Grocon; Hanna Developments; Valad; Jones Lang LaSalle; Rebel Property Group; Multiplex; Dexus; and, CB Richard Ellis”. Being the earliest documentary evidence before me from the Applicant which mentions the Trade Mark, I quote the 7 December 2006 letter in full below:
Dear Sirs,
Re: Virgin Active Leasing opportunities
Virgin Management Asia Pacific represents the interests of the Virgin Group and the current Virgin Brands in Australia/Asia as well as all new Virgin ventures in the area.
In this respect we are currently seeking development opportunities for Virgin Active the international health and fitness group wholly owned by the Virgin Group.
Virgin Active currently operates 165 health clubs through UK, Italy, Spain and South Africa.
The Virgin product differs from the competitor’s by specifically offering and targeting the entire family through a range of services and activities delivered under the Virgin brand. (sic)
These include Virgin Day Spa and Club V –a fully supervised kid’s (sic) zone incorporating crèche, activity and exercise zones.
Typically we require 3000 to 5000 sqm NLA, a 10-12 year term plus options, and the appropriate provision of customer parking.
We would like to express our interest in future opportunities for the Virgin brand within the AMP Capital portfolio of properties.
We would appreciate the opportunity to discuss opportunities further at your earliest convenience.
Yours sincerely
Ian Tuckey
M: 0401 xxx xxx
[email address]
Mr Tuckey says that “during the twelve months commencing in approximately October 2006” he “also sent information booklets referred to as ‘Development Proposals’ to major companies in the Australian property market”. He exhibits “by way of example” a copy of such a booklet dated “January 2007”[9] and says that from January 2007 to the end of June 2007 he sent out this particular document to some 60 parties.
[9] Mr Tuckey does not explain why he has not exhibited any of the booklets he apparently sent out between October 2006 and January 2007.
The exhibited 24 page booklet dated January 2007 is headed “Virgin Active Health Clubs” and bears the sub-title “VIRGIN ACTIVE LIFE CENTRE DEVELOPMENT PROPOSAL”. On its introductory page it states that, “Virgin Active is looking to develop approximately 25 Life Centre Health Club sites around Australia”. It includes information about the history and nature of the Virgin Active business and significant detail of VAA’s property requirements in Australia such as size, location(s), lease terms, fit-out specifications, car parking needs, signage and the like. As Mr Tuckey explains, “This Development Proposal highlights many of the major features of the Virgin Active health clubs, including Club V, the Kids Fun and Learn to Swim Pool, Virgin Day Spa, V CAFÉ and Relaxation Zone”. I note that the document contains several photographs taken within established Virgin Active health clubs overseas illustrating these and others of the clubs’ “features”, including a picture of several children on exercise bikes with the legend “CLUB V – KIDS EXERCISE & ACTIVITY”.
“During the twelve months commencing on or about 15 October 2006” Mr Tuckey says that he “also discussed the proposed Virgin Active health clubs with representatives of major companies in the Australian property market”. He says that as part of those discussions he showed at least 60 property developers a photo booklet which “highlights and shows visually the major features of the Virgin Active health clubs from around the world, including Club V, the Kids Zone and Learn to Swim Pool, Virgin Day Spa, V Café and Relaxation Zone, including pictures of the brand names and logos for each area”. Mr Tuckey exhibits a copy of the booklet, prepared in 2005, in which “Club V” is described as a “Parent free zone for kids, soft play area, arts and crafts, crèche, events, challenges and rewards”. Accompanying pictures show children engaged in a range of activities such as painting, using exercise bikes, playing basketball, boxing and swimming. In this regard Mr Tuckey explains that, “‘Club V’ is a club and playgroup for children to attend while their parents exercise” and that it “is also an exercise and activity centre for children, which is essentially the same as that for adults, predominately offering exercise equipment, such as bicycles and hula hoops as well as sport, dance and exercise classes”.
Additionally, Mr Tuckey estimates:
that during the period commencing on or about 15 October 2006 through to approximately the end of June 2007 the majority of my working day was occupied in sourcing and handling enquiries to and from people involved in the property market in relation to the proposed Australian Virgin Active health clubs, including ‘Club V’. In those conversations, I said to the people I spoke to words to the effect (amongst other things said to promote the proposed Virgin Active health clubs):
“The Virgin Active clubs also include a V-Café and a special club for children called Club V which not only is to provide childcare facilities while their parents are doing classes at the club, but also to provide a kid’s gym and play zone which will have cycling machines and other exercise equipment, play equipment and toys. The idea being that, as with the Virgin Active and Club V models around the world, we run similar exercise classes for kids with music just as we do for adults, although obviously the classes will be tailored so that they are suitable for children.”
Finally Mr Tucker says that:
When I worked with VMAP and VAA in the promotion of the proposed Virgin Active health clubs in Australia, I worked with other members of the VMAP and VAA teams. Along with me, these team members also met with property developers, agents and other potentially interested parties and had similar conversations to those that I did with such people and distributed the same documents I did to them. We were all well versed with the Virgin Active strategy and product and I believe I can competently say that they also promoted “Virgin Active” and “Club V” in the same way that I did throughout the period.
Andrew Blackman has been Managing Director of VAA since 7 January 2007 and before that was with VMAP from September 2004. While at VMAP he “was responsible for identifying new developments and ventures in the Asia Pacific region for the Virgin Group” and “From approximately October 2004 one of the new ventures in Australia [he] was looking into was the setting up of the Virgin Group’s Australian ‘Virgin Active’ health clubs”. He outlines the history of the Virgin Active health clubs outside Australia since 1999 and within Australia since December 2008 and generally corroborates the evidence of Mr Tuckey. He mentions that “Club V”, which he describes as “a children’s exercise and play zone…offered at select Virgin Active health clubs [with] fully supervised exercise classes including dance classes, play and activity sessions and arts and crafts for children aged three months to 15 years”, was first introduced in Virgin Active health clubs (overseas) in 2001. As at 29 December 2010[10] he says there were some 116 Club V facilities operating in Virgin Active health clubs in the UK, South Africa, Italy, Spain, Portugal and Australia and he exhibits printouts “promoting Club V and its features” downloaded on 6 September 2010 from the websites < < < and < and < Being the date the Blackman declaration was made.

He says that he was aware “from in or about October 2004” that the Virgin Group intended to launch Virgin Active health clubs in Australia and that “from approximately November 2004 through to approximately December 2006 [he was] involved in the initial research and scoping plans for the proposed launch of various Virgin Group businesses in Australia, including Virgin Active health clubs”. In particular, he says that:

During the period 28 June 2005 through to 1 July 2005, senior representatives of Virgin Active Group, the head office of Virgin Active in the United Kingdom, visited Australia for the purpose of setting up the Virgin Active health clubs. This visit included: visits to a number of potential Virgin Active health club sites; meetings with real estate agents and property developers; interviews for senior management roles for the proposed Virgin Active business; and reviewing various set up issues. I also attended the meetings with the Virgin Active representatives and the property developers and real estate agents. These meetings were held in Sydney, Melbourne, Brisbane and the Gold Coast.

Mr Blackman exhibits the same photo booklet referred to by Mr Tuckey (“the photo booklet”) and says that this was used in the meetings in June and July 2005 “to explain, illustrate and highlight the features of Virgin Active health clubs throughout the world”, noting that the photo booklet “clearly identifies Virgin Active’s CLUB V as a kid’s (sic) zone for exercise, play, and arts and crafts”.

He says that he arranged for Mr Tuckey to be engaged by VMAP as a “Property and Development Consultant” in or about October 2006 and he confirms that one of Mr Tuckey’s first tasks was to source development opportunities for Virgin Active health clubs in Australia. He specifically corroborates Mr Tuckey’s evidence from this point on, adding that along with Mr Tuckey he too “attended a number of meetings with real estate agents and property developers in which [the photo booklet] was displayed”. Essentially echoing Mr Tuckey’s evidence, Mr Blackman says the meetings he personally attended “included representatives of Ray White Retail; Ray White Commercial; Grant Samuel; KWC Capital Partners; Bovis Lend Lease; Laing + Simmons Commercial; Beville Group; FDC Construction & Fitout; Grocon; Hanna Developments; Valad; Jones Lang LaSalle; Rebel Property Group; Multiplex; Dexus; and, CB Richard Ellis”.

Mr Blackman says that in or about January 2007 he briefed five market research agencies, namely Jigsaw, The Leading Edge, Added Value, Forethought and Galileo Kaleidoscope, on the proposed Australian Virgin Active health clubs and requested that they present a “pitch” as to how they would undertake the market research if they were hired. In doing so he showed each of them the photo booklet “so that they would understand how the Virgin Active health club business operates and its component parts, including its Club V facilities”. The agencies presented their pitches, involving five to ten representatives from each organization, in early March 2007 and The Leading Edge was eventually engaged to undertake the desired market research, which took place between 2 April 2007 and the end of May that year. Mr Blackman then gives some details about the market research undertaken.

Mr Blackman also confirms that the first Virgin Active health club in Australia opened on 15 December 2008 in Frenchs Forest, Sydney and that these premises “included a Club V facility”. A second health club opened in the Melbourne CBD on 15 July 2009, followed by a third in the Pitt Street Mall in the Sydney CBD on 29 October 2010. The website < on which the Frenchs Forest Club V facility is featured, launched on or about 15 September 2008 and Mr Blackman goes into some detail of the make-up, facilities and classes offered at this facility since December 2008. He also exhibits copies of “information and marketing collateral” displayed at the Frenchs Forest premises since December 2008 and of advertising material used from that time in the surrounding area on bus shelters, flyers and the local newspaper which highlighted “Club V” as “an exercise and activity zone for children” within the Virgin Active health club premises.

Discussion

Section 60

The ground based on section 60 of the Act, which Mr Lancaster identified as the Opponent’s “primary ground”, is indicated in the Notice as follows:
Trade mark similar to trade mark that has acquired a reputation in Australia – s 60
Section 60 of the Act is reproduced below:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. 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.

Note: For priority date see section 12.

Mr Lancaster identified the V CLUB Word Mark as the existing trade mark which “had acquired a reputation in Australia” as at the Priority Date, that is as at the 4 March 2008 date the opposed application was filed.
He argued that notwithstanding various deficiencies in the Opponent’s evidence, which he acknowledged, I might nevertheless infer the requisite reputation in the V CLUB Word Mark existed as at the Priority Date given:

The marketing consultancy Red Razoo was engaged on a one year contract in April 2007 for a not insubstantial sum “to develop [the Opponent’s] initial launch strategy, design and implement all branding and marketing materials including signage, website, advertisements, merchandise, flyers and to create public awareness and exposure in the market place.”
I had before me several examples of flyers or Sydney newspaper advertisements for the Business apparently distributed or published in May or June 2007 and which, although principally featuring the V Logo & Slogan Marks, also contained copy such as “Your V Club is Here”, “Hurry call V Club now!”, “Don’t miss out, visit V Club today or call now!”, “At V Club we understand you appreciate choice…”, “…V Club is Sydney’s biggest CBD fitness centre…”, “V is a Club where East meets West…”, “V is all about You” and “Your V Club is Open Today”.
Ms Short’s evidence was that use of the V CLUB Word Mark was continuous from May 2007 until the Priority Date (and beyond) and, in addition to use in advertising materials, was used on signage outside the premises, on club membership materials and stationery.
As at 4 December 2009[11] the Opponent had spent a substantial amount of money on advertising its services and, although the only information before me was that this sum had been spent “since 2006”, it was reasonable to assume a significant portion had been spent before the Priority Date.
The Business had a substantial income in the financial year July 2007 to June 2008 (and beyond) and it was reasonable to assume a significant portion of this income had been generated before the Priority Date; and
The Business had won awards for “Best Gym” in the Sydney CBD in 2008 and 2009 (as judged by an organisation with which I am unfamiliar named “Alternative Media”) and was a finalist in the City of Sydney Business Awards in 2009.
[11] Being the date Short 1 was declared.

For the Applicant, Mr Fox highlighted several of the deficiencies in the Opponent’s evidence, including:

The difficulty in identifying what particular trade mark Ms Short is referring to in various key statements she makes in Short 1. In this regard he noted, by way of example, that at paragraph 16 she says, “The mark appears in all our marketing and club materials including our website, merchandise, on all membership materials, membership cards, uniforms and badges, contracts and stationary (sic) and has since May, 2007” and that she then refers to Annexure N as being “photographs of some of the merchandising and cards which prominently feature the V Club mark”. However the V CLUB Word Mark does not appear on any of the merchandise or “membership materials” in Annexure N. Rather, either the V Logo or the V club Logo appears. (I note in passing that there are no examples in Annexure N, or elsewhere in the evidence, of any uniforms, badges, contracts or stationery showing use of any trade mark. The one page printout from the website < in Annexure N, which does bear the words “TRY OUT V CLUB”, was downloaded on 16 November 2009 and bears a “2009” copyright notice.)
That Ms Short does not give any real detail of the nature and extent of any advertising in the relevant period, or at all, save for a figure given for the total amount apparently spent on “marketing expenses” as at November 2009, some 20 months after the Priority Date. Moreover even this sum, I understand, includes the amounts spent on having several potential logos designed, on market research, on identifying that “the V Box logo was the preferred mark” and on having Red Razoo “design the branding and marketing concepts for the new club based on the mark ‘V Club’ and related logo developed by Billy Blue Creative”. Indeed, Annexure D to Short 3 is said to be “the end of financial year 07-08 statement from RBK Partners Chartered Accounting”, that is from the Business’ accountants, and this statement attributes the following expenditure for the 06-07 and 07-08 financial years for “Advertising”, “Consultancy Fees” and “Research and Development Fees” respectively[12]:
[12] I accept that Annexure E to Short 1, which is a letter dated 23 November 2009 from the same accounting firm, indicates a considerably higher sum may have been spent on “advertising” per se during the 2008-09 financial year, but this was after the Priority Date.

EXPENDITURE	2006/07 Financial Year	2007/08 Financial Year
Advertising	$4,603	$667
Consultancy Fees	$6,700	$46
Research & Development Costs	$48,901	$0

That there is no evidence as to the specific turnover of the Business as at the Priority Date, merely figures given for the “operating deficit” of the Opponent’s subsidiary for the 2006/2007 financial year and for its “annual turnover” for the subsequent two years.
That, whereas Short 1 indicates the Business had 3,900 “active members” as at October 2009, this was some 17 months after the Priority Date and the position as at the relevant date is not disclosed.
That there was no evidence before me of any advertising beyond Sydney itself and even if I were able to assess the reputation of the mark relied upon such reputation would necessarily be confined to the greater Sydney region at best.
That no instances of actual confusion were mentioned in the Opponent’s evidence. (Although I accept evidence of actual confusion is not in principle essential, absence of such evidence does not assist the Opponent’s case, particularly given the quality of the evidence the Opponent is otherwise relying upon.)

There are several other deficiencies in the Opponent’s evidence which I could point to. While Short 1 refers to the internet site at < Ms Short does not say when this website became active, nor how often it may have been accessed by members of the public. Her single reference to “TV advertising” in Short 1 is not supported by any information as to when this advertising may have taken place. Whilst she says, “The mark is featured in our Club signage outside our Kent Street premises” (sic), pictures of that signage are not in evidence and I am therefore unable to say what mark or marks may have been featured. Whilst some half dozen or so examples of the Opponent’s print advertising before the Priority Date are in evidence, I am left unaware of how frequently or in what publications this kind of advertising may have been placed. Ms Short is likewise silent as to how many advertising flyers may have been distributed before the Priority Date.

It is, in summary, impossible for me to assess the extent to which the V CLUB Word Mark relied upon by the Opponent, (or for that matter any mark containing or consisting of the V Logo), may have featured in advertising or been otherwise exposed to the relevant public as at the Priority Date. I am thus unable to say whether the mark relied upon in fact enjoyed the kind of reputation amongst the relevant public contemplated by s 60 as at that date. Nor am I able to speculate on the issue or simply draw inferences in the Opponent’s favour. As was noted by the Registrar’s delegate in Sara Lee Corporation v Bali Blue Pty Ltd[13]:
The reputation in Australia cannot be assumed — it must still be established as a question of fact — per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 ; 106 ALR 465 ; 23 IPR 193.
[13] (2003) 59 IPR 619 (at 624)
When the foregoing matters are weighed up I find I am not satisfied deception or confusion amongst a significant number of people was likely as at the Priority Date. I thus find that the Opponent has not established its s 60 ground.

Section 43

The ground based on section 43 of the Act is indicated in the Notice as follows:
Trade Mark inherently likely to deceive or cause confusion – s 43
Section 43 is reproduced below:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

It was not in dispute that to establish this ground there must be some connotation inherent in the Trade Mark such that its use as at the Priority Date was likely to deceive or cause confusion. In this regard Mr Lancaster referred to Pfizer Products Inc v Karam (2006) 70 IPR 599 (“Herbagra”) at [52]-[55], in which I note Gyles J said at [53]:
“Connotation” is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s43 is a similar purpose to that lying behind ss52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks: TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358; 173 ALR 127; 48 IPR 513; [2000] FCA 720 at [43]; McCorquodale v Masterson at [25]–[26]. Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients.
Gyles J’s words notwithstanding, Mr Lancaster argued that the offending connotation in the Trade Mark arose due to its similarity with the Opponent’s V CLUB Word Mark and in particular because of the reputation that the Opponent says had been established in its mark as at the Priority Date. To quote in full from his written submissions:
In the circumstances disclosed in the evidence, each of the Club V trade mark sought to be registered, and the Opponent’s trade mark “V Club” [that is, the V CLUB Word Mark], has the connotation of a health and fitness centre operated by or for [the Opponent’s subsidiary] and/or [the Opponent]. The use of the [Trade Mark] in relation to health or fitness services would be likely to deceive or cause confusion because health and fitness facilities or services provided by [the Applicant] do not have the sponsorship of, or any affiliation with or approval from, the Opponent. Accordingly, the application for registration must be rejected under s 43 of the Act.
Even were the evidence before me to indicate that any of the trade marks used by the Opponent had garnered sufficient reputation as at the Priority Date to enliven the Opponent’s s 60 ground, I would reject this submission. Although Gyles J did acknowledge, “An implication of sponsorship or association might qualify as such a secondary meaning or connotation”, that is really beside the point here. It remains the case that whatever connotation the Opponent claims is carried by the Trade Mark, it apparently only has this connotation because of its resemblance to another trade mark. In the above quote from Herbagra, however, Gyles J expressly states that deception or confusion caused as a result of similarity to another trade mark is outside the scope of s 43[14].
[14] See also Winton Shire Council v Lomas (2002) 56 IPR 72, per Spender J at [19].
The opposition ground based on s 43 of the Act is therefore not established.

Section 58

The ground based on section 58 of the Act is indicated in the Notice as follows:
Applicant not owner of trade mark – s 58
Section 58 itself is reproduced below:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.

To establish its section 58 ground the Opponent would need to show a party other than the Applicant first used the Trade Mark, or a mark substantially identical to the Trade Mark, in Australia, for services adjudged to be “the same kind of thing” as the Services. The use must have taken place before the 4 March 2008 filing date of the opposed application, or before the Applicant’s first use of the Trade Mark for relevant services, whichever is the earlier[15]. In this regard the Opponent relies on its use of the V CLUB Word Mark in connection with its subsidiary’s health and fitness centre business at the Druitt Street Premises.
[15] Re Hicks’ Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375

The same kind of thing

It was common ground that the Opponent’s s 58 ground only relates to the Class 41 services covered by the opposed application, which services I agree are on the face of it “the same kind of thing” as the services of the Business. In this regard the Opponent does not claim to have provided services in the nature of the “Childcare services; children's playgroups; day nurseries (creches); holiday camp services; cafeterias” covered by the Class 43 specification of the application.

Substantial identity

Obviously the trade marks CLUB V and V CLUB are not the same. Mr Fox and Mr Lancaster did however make opposing submissions as to whether they were “substantially identical”.
Mr Fox submitted that the marks were not substantially identical based upon the evidence of Lavinia Strachan, a “marketing psychologist” with considerable experience in marketing research. Ms Strachan was commissioned by the Applicant to provide her expert opinion on the issue based upon the generally accepted test (as to which see below) and in accordance with the Federal Court Practice Direction entitled “Guidelines for Expert Witnesses in proceedings in the Federal Court of Australia”.
The generally accepted test for assessing substantial identity is as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 1B IPR 523, where his Honour said at 528:
In considering whether marks are substantially identical 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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
Based on such a side by side comparison Ms Strachan concluded that there was “a substantial difference” between the marks CLUB V and V CLUB because:
[T]he impact of the sequencing would in my opinion cause consumers to perceive the two marks as being different. The reason for this is that the act of altering the sequence assumes in the mind of the consumer that there is a new mark being formed. This is because it is said differently (and sounds different as a result) and also looks different.
Ms Strachan does not however explicitly say that “the consumer” she has in mind would be contemplating the marks in question in the context of services offered by health and fitness “clubs”. In any event, notwithstanding Ms Strachan’s opinion I find I am in agreement with Mr Lancaster that the marks might reasonably be considered substantially identical. He submitted that in the context of the Applicant’s Class 41 services the word “club” would most likely be seen as descriptive or otherwise non-distinctive and that it was the letter “V” that was, in Windeyer J’s terms, the “essential feature” of both marks. As Mr Lancaster put it, “The order of the ‘V’ and the ‘Club’ is not a ‘substantial’ or material feature to either mark as the order of the words does not affect the meaning of the mark or alter the effect on the viewer”. As indicated, I agree. I accordingly proceed on the basis that the marks CLUB V and V CLUB are substantially identical in the context of the relevant services.

First use of the parties’ trade marks

I am satisfied on the evidence that the Applicant first provided its Class 41 services to the public at large by reference to the Trade Mark on or about 15 December 2008 when its Virgin Active health centre opened in Frenchs Forest (being some months after the 4 March 2008 priority date of the opposed application). I am likewise satisfied that the Opponent first provided its similar services to the public at large by reference to the V CLUB Word Mark in May or June 2007 when the Druitt Street Premises opened. This is however not the end of the enquiry, since both parties claim that their preparations for the opening of their respective health and fitness centres also involved use of their respective trade marks. This is the issue to which I now turn.
Both Mr Fox and Mr Lancaster referred to the decisions in Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2) (1984) 156 CLR 414; 3 IPR 545 (“Moorgate”) and Buying Systems (Australia) Pty Limited v Studio Srl (1995) 30 IPR 517 (“Studio”). Moorgate concerned possible use of a trade mark in Australia by an overseas based trader in relation to cigarettes. Deane J (with whom Gibbs CJ and Mason, Wilson and Dawson JJ agreed) said (at CLR 433; IPR 557) that an overseas based trader may be able to establish ownership of a trade mark in Australia on the basis of first use by relying on preparatory steps it took to use it commercially in Australia, provided there was “public use” of the mark and “an existing intention to offer or supply goods bearing the mark in trade”. The Court nevertheless concluded that on the evidence before it Moorgate had merely engaged in “preliminary discussions and negotiations” about whether its trade mark would be used in Australia and that there was not at the time any “existing intention” to offer or supply cigarettes under the mark.
In Studio, the (Australian based) principal of Buying Systems had decided to publish a new fashion and hairdressing magazine under the name “Studio Collections” and had had business cards and letterheads made with the word “Studio” printed on them. He had contacted potential advertisers and solicited advertising to be placed in the new magazine, two of whom ultimately did place their advertisements in the first issue published some six months later. The issue was whether Buying Systems had used the trade mark STUDIO in relation to fashion and hairdressing magazines prior to Studio Srl’s application to register it, which had been made after Buying Systems had solicited this advertising but before it had published the first issue of the magazine.
In finding for Buying Systems Gummow J distinguished Moorgate on the facts, saying (at 520):
These steps amount to sufficient activity by [Buying Systems] to produce the result that [Studio Srl] at the date of its application … could not accurately put itself forward as claiming to be [owner] of the relevant mark. The activities of [Buying Systems] were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine. This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade. The case is quite different from activities of the nature discussed in Moorgate.
I note in passing that it is apparent from Gummow J’s decision that he did not interpret Deane J’s words in Moorgate regarding preparations for use as being necessarily restricted to the case of an overseas based trader. It is nevertheless convenient to also note at this point, given the Applicant is based overseas, that Deane J did specifically say (at CLR 432; IPR 556):
The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act. In such a case, the court “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” (see Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211 ; [1947] ALR 436 at 437; Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 400).
Nor have Deane J’s comments in Moorgate been interpreted as only relevant to cases where goods are involved. Indeed, his Honour’s comments may be all the more relevant where preparations for the provision of services are under consideration. Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331 involved a dispute between an Australian based applicant to register the trade mark SIZZLER in respect of restaurant services (“Sabra”) and an overseas user of the same mark (“Sizzler International”). Sizzler International based its claim to ownership of the mark in Australia on the fact that it had operated a chain of restaurants under the mark in the USA and elsewhere overseas since 1951, that these restaurants now numbered more than 600 in the USA alone, that it had been planning to open a restaurant in Australia for some years, that it had been making active preparations for this and that it subsequently did open the restaurant, albeit after the date of Sabra’s application for registration. In distinguishing the facts in this case from those in Moorgate, Hearing Officer HR Hardie highlighted (at 338) that:
…the Moorgate case is a determination in respect of goods and that the present application is an application for registration of a mark for services. The establishment of a service industry in Australia, is clearly a different matter to the development of a trade in goods. A foreign manufacturer can achieve sales by the relatively simple procedure of local advertisement and direct dispatch to customers, or by the appointment of a local distributor. The transportation of a foreign service industry to a local site, however, will in many cases call for sophisticated infrastructures to be in place before any facet of that service can be put on the market. Sizzler Restaurants International's restaurant services is a case in point. To duplicate an established American restaurant chain in the local market requires outlay of considerable resources. To be in the position where the investment on the scale necessary for such a development can proceed, market research must be undertaken and, if the service is to depend on a franchise network, negotiations with other business entities must have been concluded.
The Hearing Officer continued (at 339):
I distinguish this use from the use found short in the Moorgate case. There, the court found it was not established that at the critical date there was an existing intention to offer or supply the goods bearing the mark in trade. There was no more than preliminary discussions and most notably, the choice of a trade mark was not yet settled. Here, I do not find that there were services which had been offered under the trade mark, but I do find that there was a fixed and existing intention to use the mark sizzler, that the market research and negotiations were much more than the preliminary discussions undertaken in the Moorgate case, and that by means of the market research and trade negotiations, the Sizzler Restaurants International had exposed its use of the trade mark sizzler to the public.
Bearing the above cases in mind, I am satisfied on the evidence before me that the Applicant had “a fixed and existing intention to use” the Trade Mark and that there was “public use” of the Trade Mark in Australia in respect of its Class 41 services of interest at least as early as 7 December 2006. I have nominated this date because it is the date shown on the letter (reproduced in paragraph 21 above) that Mr Tuckey sent to the Divisional Leasing Managers of AMP Capital Investors in Sydney and which he says is typical of the letters he sent from “in or about October 2006” to some 60 real estate agents and property developers seeking premises for the proposed Virgin Active health clubs. As earlier noted, the letter in question refers to the Trade Mark in relation to “a fully supervised kid’s (sic) zone incorporating crèche, activity and exercise zones”. The letters sent by Mr Tuckey were also apparently accompanied by copies of an “information booklet” (described in paragraph 23 above) which from at least January 2007 not only featured the Trade Mark but also included detailed information about the Applicant’s intentions and requirements for the provision of its relevant services in Australia.
Turning to the Applicant’s preparations for use of the V CLUB Word Mark, as mentioned in paragraph 16 above it was not until some time after the marketing agency named Bread and Butter was engaged “in November 2006” that Bread and Butter’s “research identified the V Box logo was the preferred mark”. As indicated earlier I understand Ms Short to be referring here to what I defined in paragraph 12 as the V Logo and I note Ms Short does not say anywhere in her evidence when the V CLUB Word Mark may have been identified as a separate trade mark that the Opponent (or its subsidiary following its incorporation on 4 May 2007) intended to use.
Nor does Ms Short provide any information as to the Opponent’s activities from the time it received Bread and Butter’s input and “April 2007” when it engaged another marketing agency, Red Razoo, “to develop [its] initial launch strategy, design and implement all branding and marketing materials including signage, website, advertisements, merchandise, flyers and to create public awareness and exposure in the market place”.
It is then impossible for me to say with any precision when the Opponent formed “a fixed and existing intention to use” the V CLUB Word Mark for relevant services[16] or when it first publicly used the mark in the course of its preparations for the opening of the Druitt Street Premises, save to say this was unlikely on the evidence before me to have been before 7 December 2006 when Mr Tuckey wrote to the Divisional Leasing Managers of AMP Capital Investors in Sydney.
[16] Or to assign it or license its use to a subsidiary.
The Opponent has accordingly not established use of the V CLUB Word Mark for relevant services earlier than the Applicant has of the Trade Mark. The opposition ground based on s 58 of the Act is therefore not established.

Decision

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.

I have found that none of the opposition grounds pressed at the hearing has been established. I have accordingly decided the opposed trade mark application may proceed to registration 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 registration shall not occur until the appeal has been decided or discontinued.

Costs

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 Opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

4 November 2011