Woodman Labs Inc (Now GoPro, Inc) v Ross Walmsley

[2015] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by WOODMAN LABS INC to registration of trade mark application 1539644(29,30) - GOPRO G (logo) - filed in the name of Ross Walmsley.

Delegate:	Jock McDonagh
Representation:	Opponent: Mark Williams of Allens Linklater, Patent and Trade Mark Attorneys Applicant: Not represented, no submissions
Decision:	2015 ATMO 81 Section 52 opposition – evidence not allowed under reg 21.19 but considered under reg 21.15(4) – grounds pursued under sections 42and 60 not established – application to proceed to registration.

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Ross Walmsley (‘the Applicant’). Relevant details of the applications are set out below.

Trade Mark Application No	1539644
Trade Mark
Filing Date:	7 February 2013
Goods:	Class 29: Algae prepared for human foods; Animal marrow for food; Banana based snack food products; Chilled foods consisting predominantly of fish; Chilled foods consisting predominantly of game; Chilled foods consisting predominantly of meat; Chilled foods consisting predominantly of poultry; Colza oil for food; Edible essences for foodstuffs (oils); Edible oils for use in basting foodstuffs; Edible oils for use in cooking foodstuffs; Egg-based foodstuffs; Extruded potato products for use in food; Flowers and leaves, being dried, cooked or preserved foodstuffs; Food made principally from milk; Food pastes made from fish; Food pastes made from game; Food pastes made from meat; Food pastes made from poultry; Food preparations consisting principally of meat; Food preparations consisting principally of meat products; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Food preparations having a base of vegetables; Food preparations made from meat; Food preparations with a vegetable base; Food preparations with added minerals for use by athletes; Food preparations with added proteins for use by athletes; Food preparations with added vitamins for use by athletes; Food preserves; Food products consisting principally of fish; Food products derived from fish; Food products derived from meat; Food products derived from seafood; Food products made from cooked fruits; Food products made from cooked nuts; Food products made from cooked vegetables; Food products made from dried fruits; Food products made from dried nuts; Food products made from dried vegetables; Food products made from eggs; Food products made from fish; Food products made from meat; Food products made from nuts; Food products made from preserved fruits; Food products made from preserved nuts; Food products made from preserved vegetables; Food products made from seaweeds; Food products made of fish; Food products made of shellfish; Food protein for human consumption; Food spreads being a blend of edible oils and edible fats; Food spreads consisting principally of dairy products; Food spreads consisting principally of edible fats; Food spreads consisting principally of edible oils; Food spreads consisting principally of vegetables for sandwiches; Foods made from milk products; Foods prepared from fish; Foods prepared from milk; Foodstuffs consisting of poultry; Foodstuffs consisting of sausage meat; Foodstuffs consisting of sausages; Fruit based snack food; Fruit-based snack foods; Gelling agents for use in foods; Isinglass for food; Jellies for food; Lard for food; Nut products for food; Olive oil for food; Palm kernel oil for food; Palm oil for food; Pollen prepared as foodstuff; Potato based snack food products; Potato snack foods; Prepared foods consisting principally of cheese; Prepared foods consisting principally of fish; Prepared foods consisting principally of fruits; Pulses (foodstuffs); Pulses (for food); Rape oil for food; Seaweed extracts for food; Smoked food products; Snack food products made wholly or principally of potatoes; Snack foods consisting principally of meat; Snack foods made from dehydrated vegetables; Snack foods made from dried vegetables; Snack foods made from eggs; Snack foods made from extruded vegetables; Snack foods made from meat; Snack foods made from potatoes and wheat (potatoes predominating); Snack foods made from pre-cooked vegetables; Soya beans, preserved, for food; Suet for food; Sunflower oil for food; Vegetable food products Class 30: Aromatic preparations for food; Aromatic preparations for the food production industry; Auxiliaries (other than essential oils) for the improvement of the flavour of food; Cereal based food bars; Cereal based snack food; Cereal breakfast foods; Cereal snack foods flavoured with cheese; Crisp snack food products; Curried food pastes; Dressings for food; Dried pasta foods; Essences for food (other than essential oils); Essences for foodstuffs (except etheric essences and essential oils); Essences for use in food preparation (other than essential oils); Extracts of cocoa for use as flavours in foodstuffs; Extracts of coffee for use as flavours in foodstuffs; Extruded food products made of maize; Extruded food products made of rice; Extruded food products made of wheat; Extruded savoury snack foods; Flavourings for snack foods (other than essential oils); Flour concentrate for food; Food dressings (sauces); Food essences (except etheric essences and essential oils); Food flavourings (other than essential oils); Food mixes for making bakery products; Food pastes (seasonings); Food pastes (spices); Food products consisting of cereals; Food products containing cereals; Food products containing flour; Food products for making nachos; Food products for making tacos; Food products having a pastry base; Food products made from potato flour; Foods produced from baked cereals; Foods produced from puffed cereals; Foods with a chocolate base; Foods with a cocoa base; Foodstuffs made from cereals; Foodstuffs made from corn; Foodstuffs made from dough; Foodstuffs made from farinaceous products; Foodstuffs made from maize; Foodstuffs made from oats; Foodstuffs made of rice; Foodstuffs made of sugar for making a dessert; Foodstuffs made of sugar for sweetening desserts; Foodstuffs made with cereals; Foodstuffs made with flour; Fructose syrup for use in the manufacture of foods; Glazes for food; Glazing for food products; Glazing products for application to food; Gluten prepared as foodstuff; Groats for human food; Gruel, with a milk base, for food; Malted food drinks; Mineral salts for preserving foodstuffs; Mixes for making breakfast foods; Oat-based food; Polysaccharides for use as food for culinary purposes; Preparations for preserving foodstuffs (salt); Preparations for use as rising agents in food; Preservatives for food (salt); Products for use in food preservation (salt); Rice based snack foods; Snack food products consisting of cereal products; Snack food products made from cereal flour; Snack food products made from cereals; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products made from rice; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods consisting principally of bread; Snack foods consisting principally of confectionery; Snack foods consisting principally of grain; Snack foods consisting principally of pasta; Snack foods consisting principally of rice; Snack foods made from cereals; Snack foods made from corn; Snack foods made of wheat; Snack foods made of whole wheat; Snack foods prepared from cereals; Snack foods prepared from grains; Snack foods prepared from maize; Snack foods prepared from potato flour; Sodium chloride for preserving foodstuffs; Wafers (food)

1. The application (‘the Trade Mark’) was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 30 May 2013. Woodman Labs Inc (‘the Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark on 30 July 2013, followed by a Statement of Grounds and Particulars (‘the Statement’) on 7 August 2013.  Thereafter the Applicant filed Notice of Intention to Defend on 29 August 2013. The Opponent filed evidence in support as provided by the Trade Mark Regulations 1995 (‘the Regulations’). No evidence was filed by the Applicant.

2. I heard the matter as one hearing in Melbourne on 28 May 2015 as a delegate of the Registrar of Trade Marks. Mark Williams of Allens Linklater, Patent and Trade Mark Attorneys, represented the Opponent. The Applicant was not represented at the hearing, and did not provide written submissions.

3. On 1 June 2015, the Opponent advised that it had changed its name to GoPro, Inc.

   Grounds of Opposition

   5. The Opponent nominated grounds of opposition under sections 42, 44, 60 and 62A of the Act, but only those under sections 42 and 60 were pursued at the hearing. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 and Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27]. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

4. For the sake of completeness I note that the grounds other than those under section 60 and subparagraph 42(b) have not been established and that in an appeal from this decision the Court will consider the matter de novo and any ground may thus be relied upon.

5. The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

   8.     The evidence consists of the following declaration:

Declarant	Position	Date Made	Annexures
Evidence in Support
Mark Andrew Williams (‘Williams’)	Legal Practitioner for Opponent’s attorney firm	19.03.14	MAW-1 to MAW-13

9.     Williams provides details of the Opponent’s history, use of its trade marks in Australia, as well as the amount of sales and promotions of its products bearing its trade mark in Australia.

1. The Opponent adopted the term GOPRO in 2004 as a reference to a means of enabling amateur athletes to take professional video footage of their athletic activities. The Opponent has rapidly achieved a very high profile globally in the field of rugged, lightweight, high definition personal cameras that can be worn on the person or mounted on a variety of places, such as aircraft, cars, surfboard, skis or boats.

2. Williams exhibits numerous examples of the use of the Opponent’s trade mark in relation to cameras and accessories, various mounting devices, as well as software and applications.

3. Williams also evidences extensive sales of branded products Australia-wide through all of the major retailers of such items, such as Harvey Norman, JB Hi-Fi, Rebel Sports, and Bing Lee.

4. Gross sales of the Opponent’s GOPRO products in Australia were shown to have commenced relatively modestly in 2008, at $360,000, but increasingly exponentially to some $47,000,000 in the 2013 financial year to 19 March 2014. Furthermore, the Opponent sold some $3,600,000 through its Australian web-store in the 2013 financial year to date.

5. Williams discusses the substantial expenditure in promoting the Opponent’s GOPRO products. For example in the fourth quarter of 2012, the Opponent spent $1,411,682 in promoting its GOPRO products. Such promotion included ‘traditional’ media, such as television and print advertisements, along with digital ‘social media’, such as You Tube, Facebook, Twitter and Instagram.

6. The Opponent is also shown to have exhibited its GOPRO products at various Australian exhibitions and conferences, such as the Australian Motorcycle Expo, Society of Motion Picture and Television Engineers, and The Digital Show. Even AFL umpires have worn GOPRO cameras during practice matches.

7. Williams also exhibits copies of a number of awards and favourable reviews received by the Opponent in Australia and worldwide.

8. The Opponent also exhibited the following Australian registration:

Trade Mark Registration No	1229838
Trade Mark	GOPRO
Filing Date:	14 March 2008
Goods:	Class 9: Scientific, nautical, surveying, photographic, cinematographic, measuring and telecommunication apparatus and instruments; apparatus for recording, transmitting or reproducing sound or images; magnetic data carriers; recording discs; data processing equipment; photographic machines and apparatus; cinematographic machines and apparatus; cameras including film cameras, digital cameras, digital still cameras, video cameras, digital video cameras, wireless digital video cameras, infrared cameras, waterproof cameras, cinecameras, and parts and fittings for these goods; parts and accessories for mounting cameras to objects including suction cups and as sold as kits; electronic machines, products, apparatus and peripherals, including, video observation, collection and recordation systems comprising a portable, transportable, and wearable camera, mounting hardware, computer peripherals and software to record, store, access, reproduce, transmit, monitor, and disseminate images, graphical data, spectral data and visual and audiovisual content; presentation apparatus for capturing and transmitting visual images; remote control apparatus; electric flash units for cameras; copy stands; tripods; camera slings and straps including neck, shoulder and wrist straps for cameras; camera cases; lens cases; batteries and cells; battery chargers; ac adapters; optical apparatus and instruments; lenses; processed glass (not for building); binoculars; telescopes; microscopes; glasses; sun glasses; data processing equipment and computers; computer programs; computer software; pc (personal computer) connecting codes for digital cameras; printers; scanners; protective helmets; recorded video discs and video tapes; electronic publications; parts and accessories for all the foregoing

1. Prior to the hearing, the Opponent’s attorneys made an application for the Registrar to exercise her discretion, pursuant to regulation 21.19 of the Trade Mark Regulations 1995 (the ‘Regulations’) to take into account the declaration of Ross Walmsley dated 17 June 2014. The parties were advised by this Office that unless a separate hearing was requested, the matter would be dealt with at the substantive hearing. No such request was made.

2. At the hearing, Mr Williams made submissions based on the fact that Mr Walmsley’s declaration became known to the Opponent after evidence in support had been filed; however, because no evidence in answer had been filed, there was no further opportunity to file this declaration as evidence for the Opponent. Mr Williams posited an alternative means of taking the declaration into account, namely under regulation 21.15(4). Ultimately, I reserved my decision on this preliminary issue and advised that I would consider the issue and include my decision with my decision on the substantive issue.

3. The material I have been asked to consider is a declaration by the Applicant made on 17 June 2014. It was evidence in support of an opposition by Mr Walmsley to the registration of a ‘GOPRO’ device applied for by the current Opponent in separate proceedings.

4. In that declaration, Mr Walmsley stated, inter alia:

   “Exhibit 3 – registered trade mark no. 1535525 in class 25/32 was the first registered logo/word mark in Australia and trade mark no. 1565860 in the name of Woodman Labs Inc. will cause confusion to GOPRO G registration no. 1535525 in the Name of Ross Walmsley in the retail sector and should be removed to avoid misleading practices under section 18/19 of Australian Consumer law”.

5. At the hearing, Mr Williams pointed out that trade mark application 1565860 was in relation to goods and services in classes 9, 38, 41 and 42, while trade mark 1535525 is in respect of goods in classes 25 and 32.

6. Having my attention drawn by the Opponent to the opposition proceedings against the Opponent’s application 1565860, I note that the Register shows that Mr Walmsley withdrew his opposition on 19 November 2014 and application 1565860 proceeded to registration.

7. Regulation 21.19 provides:

   21.19Registrar may use information available

   (1)If:

   (a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

   (b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

   (c)the Registrar proposes to take the information into account in making a decision in the proceedings;

   before making the decision the Registrar must:

   (d)provide the information to the party; and

   (e)give the party a reasonable opportunity to make representations about the information.

   (2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

8. Regulation 21.19 has been present as it appears in the Regulations since the commencement of the Trade Marks Regulations 1995 (Cth). The application of 21.19 is discretionary, allowing the Registrar of Trade Marks on her own initiative to take into account information available to her, but it does not require the Registrar to do so. A party cannot compel the Registrar in this regard.

9. While the Walmsley declaration is arguably relevant to these proceedings, for the reasons I discuss in relation to the section 60 ground below, I do not propose to take the information into account in making my decision. Since I am not proposing to take the information into account, the remainder of regulation 21.19 is not applicable.

10. I now consider Mr Williams’ alternative submission that I take the declaration into account under regulation 21.15(4). Mr Williams contended that the Applicant’s declaration as to the likelihood of deception or confusion between the parties respective trade marks is material to these proceedings.

11. Regulation 21.15 relevantly provides:

    21.15Opportunity to be heard by Registrar

    (1)This regulation applies if the Act or these Regulations provide for a person to be heard by the Registrar.

    …

    (4)The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

12. Under sub-reg 21.15(4), the Registrar is not bound by the rules of evidence, as are the courts. In the words of Lord Denning MR in T.A. Miller Ltd v The Minister for Housing and Local Government, [1969] RPC 91:

    “A tribunal (of this kind) is master of its own procedure, provided that the rules of natural justice are applied. … Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law … Hearsay is clearly admissible before a tribunal.  No doubt in admitting it, the tribunal must observe the rules of natural justice, but this does not mean that it must be tested by cross-examination. It only means that the tribunal must give the other side a fair opportunity of commenting on it and of contradicting it …”

13. Although I had formed a view that I would not take the material into account, the Applicant was not present at the hearing at which the Opponent made submissions on the material. Therefore, I subsequently advised the parties that I would adjourn the proceedings in order to give the Applicant the opportunity to comment on the consideration of the material. The Applicant did not object, made some comments relating to his prior trade mark registrations, and noted that  his business would be employing Australians in manufacturing his goods.

    Discussion

    Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

    31. Section 60 of the Act provides:

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

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

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

Note:For priority date see section 12.

1. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[3]  by Kenny J at [81] – [82]:

   [3] (2000) 51 IPR 102

   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?

3. Further, at [86], Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

4. The Opponent submitted that the amount of goods sold by the Opponent and its annual sales figures and promotion expenditures were substantial and reflected the reputation required to support this ground. I accept this submission.

5. The Opponent’s evidence establishes that the Opponent’ trade mark has a very substantial reputation in the adventure and sports photography market in which it inhabits. Indeed, it is probable that GOPRO is almost the default term for video cameras worn on the person or mounted on vehicles and various items used in adventurous and sporting activities.

6. Williams also demonstrates an extensive chain of electronics and department stores that sell the Opponent’s goods under the GOPRO trade mark, along with the Opponent’s on-line presence also selling such goods.

7. The Opponent has established the first limb of this ground of opposition, so I now turn to the second limb, being the likelihood of deception or confusion. The question requires, in practical terms, that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s trade mark, the degree of similarity of the trade marks and finally, the nexus of the goods.

8. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[4] the Registrar’s delegate observed that:

   [4] [2012] ATMO 124 at [40]

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

9. In the present matter the Trade Mark will be used in relation to vastly different goods to those for which the GOPRO trade marks have acquired a reputation. The Opponent’s evidence does not show any use of the GOPRO trade mark on goods similar to those listed in the application.  The onus is on the Opponent to satisfy me that there is a real likelihood of deception or confusion.

10. Mr Williams referred me to Williams, Exhibit MAW-13, which shows a page from the Applicant’s web-site containing photographs from action sports including snowboarding, mountain biking, skateboarding and surfing. Mr Williams submitted that the primary and historical markets for the Opponent’s goods use those goods in the activities pictured. Therefore, it was submitted, consumers are likely to be deceived or confused by erroneously assuming that the Applicant’s goods are in some way connected or affiliated with, or endorsed by, the Opponent.

11. I note that the Exhibit does not display either the Trade Mark or any examples of goods as specified in the application. The only goods shown are the top end of drink cans, below a heading entitled ‘energy drinks’. Such goods are class 32, and not the subject to these proceedings.

12. Further, in the exhibit, none of the activities shown in photographs include any photographic equipment or accessories. Indeed, the web-site exhibited would appear to be a ‘work in progress’ rather than a finished product.

13. Mr Williams submitted that the visual similarity – in particular the common ‘GOPRO’ element – would inevitably lead to deception or confusion.

14. Mr Williams continued his submission by quoting the Trade Marks Office Manual of Practice & Procedure, Part 27 at [3.2] (which discusses letters of consent:

    [T]he parties … are in a position to gauge market realities and the likelihood of deception or confusion resulting from the use of the two trade marks.

15. To this end Mr Williams submitted that the text of the Walmsley declaration, cited at [27] above, is effectively a concession by the Applicant that consumer confusion is likely despite the fact the respective parties’ goods and services are not similar or closely related.

16. With respect, I cannot accept that submission. The declaration was made in support of different opposition proceedings before the Registrar at the time it was made. It was not made in contemplation of these proceedings, and was made after the relevant date I refer to in [6] above. The opposition proceedings were withdrawn on 19 November 2014. Even if there were a concession within the declaration, it was withdrawn along with the opposition and is not relevant to these proceedings.

17. Notwithstanding the shared ‘GOPRO’ element in the opposing trade marks, I consider that there a sufficient visual and aural differences in the marks (the Trade Mark could be pronounced GOPROG or GOPRO-GEE), combined with the very different markets and customers involved with the relevant goods such that deception and confusion are unlikely.

18. Additionally, there is no evidence before me of any actual confusion in the marketplace in relation to the origin of the Applicant’s and Opponents’ respective goods provided under the respective trade marks.

19. I am not satisfied that the Applicant’s use of the Trade Mark would be likely to deceive or cause confusion. The parties are likely to trade in quite different markets and the vastly different natures of the goods are such that it is unlikely that consumers would assume that the goods came from the same source. The Opponent has not established the section 60 ground of opposition.

    Subparagraph 42(b)

    51. Subparagraph 42(b) of the Act provides:

    42Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a)…

    (b)its use would be contrary to law.

20. The Opponent relies on section 18 of the Australian Consumer Law 2010 (‘the ACL’), and the common law tort of passing off.

21. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited[5], Gibbs C.J. said (at page 6):

    [5] [1982] HCA 44; (1982) 42 ALR 1

    The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

22. In the same case Mason J. said (at page 15):-

    “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

23. The opposition under subparagraph 42(b) is not established.

    Decision

    56. At the relevant date, section 55 of the Act provided:

    55Decision

    (1)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.

24. The Opponent has not established its opposition to the registration of the Trade Mark.

25. The Trade Mark may then 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 and that the disposition of the Application should be in accordance with the Court’s order or direction.

    Costs

    59.     Cost may follow the event and I award costs against the Opponent at the scale set out in the regulations.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    4 September 2015