YogaGlo, Inc v Gabrielle Brown

[2015] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by YogaGlo, Inc to registration of trade mark application 1492065(41) - GLOW (Logo) - filed in the name of Gabrielle Brown.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Gerard Skelly, solicitor, of Shelston IP Applicant: Neil Strawbridge, barrister.
Decision:	2015 ATMO 103 s52 opposition; grounds under sections 44, 59, 60 and 42 not established.

Background

1. In this matter Gabrielle Brown (‘the Applicant’) has applied (‘the Application’) under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:

Application No:  1492065
Priority Date:  24 May 2012
Services:  Class 41: Physical fitness instruction
  (‘the Services’)
Trade Mark:  
  (‘the Trade Mark’)

Endorsement:  Provisions of subsection 44(4) and/or Reg 4.15A(5) applied

1. The Trade Mark was examined as mandated by section 31 of the Act and grounds for rejection in terms of section 44 were resolved by the Applicant who provided evidence which established use of the Trade Mark before the priority dates of the cited trade marks[1].

   [1] Registrations 1131112 and 1174923 were cited by the Examiner against the Application as further discussed under the heading Section 44.

2. Acceptance of the Trade Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 19 September 2013.

3. On 19 November 2013 YogaGlo, Inc. (‘the Opponent’) of Wilmington, Delaware, filed Notice of Intention to Oppose, followed on 19 December 2013 by its Statement of Grounds and Particulars (‘the SGP’). The SGP particularises grounds under sections 60 and 42 of the Act and was subsequently amended by the Opponent to include grounds under sections 44 and 59.

4. Subsequently the parties filed evidence in relation to their respective positions as allowed by the Trade Mark Regulations 1995 (‘the Regulations’).

5. As a delegate of the Registrar of Trade Marks I heard the submissions of the parties at a hearing in Canberra on 26 August 2015.  Mr Gerard Skelly, solicitor, of Shelston IP represented the Opponent; Mr Neil Strawbridge, barrister, represented the Applicant by telephone.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26].

2. The relevant date at which the grounds must be considered is the filing date of the Trade Mark.[3]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence filed by the parties consists of the following declarations:

In Support

Derik Mills with Exhibits A to C made on 9 May 2014 (‘Mills Declaration’)

Gerard James Skelly with Exhibits GJS-1 to GJS-3 made on 12 May 2014 (‘First

Skelly Declaration’)

(A second declaration by Mr Skelly was not filed in time and was refused as evidence ‘Second Skelly Declaration’)

In Answer

Adrian Mark Adams with Exhibits A to C made on 5 August 2014 (‘Adams Declaration’)

Gabrielle Brown with Annexures GB1 and GB2 made on 6 August 2014 (‘First Brown Declaration’)

Steven Christian Maras with Annexure GB3 made on 14 August 2014 (‘Maras Declaration’)

Gabrielle Brown with Annexures GB4 and GB5 made on 14 August 2014 (‘Second Brown Declaration’)

In Reply

Gerard James Skelly made on 15 May 2014 (refiling of ‘Second Skelly Declaration’)

Gerard James Skelly with Exhibits GJS-4 to GJS-8 made on 21 October 2014 (‘Third Skelly Declaration’)

1. The Mills Declaration claims the use of the Opponent’s trade marks YogaGlo and FitnessGlo in Australia.  The Opponent’s services in relation to which it claims use of its trade mark are, inter alia, in the nature of prerecorded physical fitness programmes delivered via the Internet. More detail about the general nature of these services appears from the Australian registrations of the Opponent’s trade marks at [18] below. The Mills Declaration explains that the declarant is CEO of Glo Holdings which wholly owns both the Opponent (who he defines as ‘YogaGlo’ as I do hereafter) and FitnessGlo Inc (‘FitnessGlo’ hereafter).

2. The Mills Declaration states that from 7 April 2009 through to the present YogaGlo has reported over 670500 Internet[4] sessions originating from users located in Australia and, from 1 January 2009 through to 24 May 2012 (the priority date of the Trade Mark) YogaGlo has reported over 134500 Internet sessions originating from users in Australia.  Further, from April 2010 through to the present, FitnessGlo reported over 6600 Internet sessions originated from Australia.

   [4] The source of these figures is Google Analytics.

3. It is not clear to me what an Internet session is but I will assume that it refers to a person logging onto the Opponent’s website, paying for, and then accessing, a recorded exercise class.

4. I note that the above claims do not amount to an express statement that any particular services were offered under either of the trade marks YogaGlo or FitnessGlo in Australia – just that the companies YogoGlo and FitnessGlo reported access to their websites by a certain number of Australians.  I further note that, as the Mills Declaration is dated 9 May 2014, the claims as to the FitnessGlo sessions refer to 6600 Internet sessions over 1500 days or 4.4 sessions a day on dates which include some irrelevant ones after the priority date.  Similarly the YogaGlo figures reflect access to the YogaGlo website by approximately 108 Australians per day before to the priority date.  I consider that these figures are very likely to be less than the daily attendance at one normal suburban gymnasium offering exercise classes.

5. The First Skelly Declaration brings into evidence the occurrence of the elements GLO or GLOW within trade marks registered within Class 41.  Mr Skelly also provides documents relating to the prosecution of the Application by the Applicant obtained by the Opponent under Freedom of Information provisions.

6. Mr Skelly states that enquiries that he has caused to be conducted into the business activities of the Applicant indicate that the only physical fitness instruction services provided by reference to the Trade Mark by the Applicant are pilates instruction services.

7. However, Mr Skelly does not state who carried out the enquiries, when the enquiries were made or what form of enquiry was made on his behalf.  He does not state whether the enquiries were made of the Applicant or one of her employees or one of her customers.  Mr Skelly goes on to state:

   These enquiries also indicate the Applicant commenced offering online pilates instruction services some time after the filing date of the Application. Such online services have been subscribed to only by local customers who have also attended physical classes provided at the Applicant's business premises. As a result of these enquiries, I have formed the view that any reputation and goodwill generated by the Applicant's use of the opposed trade mark has been necessarily localised and confined to the geographical area around the city of Prospect, being an inner urban community located north of the city of Adelaide in South Australia.

8. I am again not sure what the source of Mr Skelly’s information is or the basis for his comments about the Applicant’s online services. 

9. The Third Skelly Declaration appends a number of Internet Archive extracts showing the Applicant’s website at various dates before the priority date of the Application.  Mr Skelly states:

   These internet archive searches indicate that the earliest reference to the Applicant offering online pilates instruction services to members is when the website was crawled on 1 July 2012 where live streaming for online members is indicated to be "coming soon". The earliest reference to these live streaming services actually being available to members is when this website was crawled on 2 January 2013. I note all this activity is after the filing date of the Application.

10. I will mention now that the Opponent has two trade mark registrations in Australia which I consider relevant to these proceedings, each of which it will be noted postdate the priority date of the Application:

Registration No:  1511086
Priority Date:  29 August 2012

Services:Class 38: Broadcasting and streaming of audio visual media content in the fields of fitness, exercise and health related matters via a global computer network; webcasting services; providing access to online forums for transmission of messages and blogs over the Internet; providing online electronic bulletin boards for transmission of messages among users in the field of general interest; providing online chat rooms for social networking; web messaging services; video on demand transmission services via the Internet; providing online forums for transmission of messages featuring fitness, exercise, music and health related matters; electronic transmission and streaming of digital media content for others via global and local computer networks; streaming of audio, visual and audiovisual material via a global computer network; communications services, namely, transmitting streamed sound and audio visual recordings via the Internet; streaming of video and audio material on the Internet; providing access to computer databases; electronic transmission of instant messages and data

Class 41: Education and entertainment services, namely, online instruction in the fields of exercise, fitness, music and health related matters; providing online information via a global computer network on the subjects of exercise, fitness, music, health education and health fitness matters; electronic publishing services, namely, publication of text, graphics, photographs, images, and audio-visual works of others online for streaming featuring exercise, fitness, music, and health-related matters; providing blogs in the nature of an online journal over the Internet featuring exercise, fitness, music, and health-related matters; providing a website featuring non-downloadable audio-visual content, specifically, motion pictures, videos, music videos, music, video clips, audio clips, music clips, film clips, and photographs, in the fields of exercise, fitness, and music; consulting services in the fields of exercise and fitness; physical fitness instruction; physical fitness training services; providing a web site featuring information on exercise and fitness; providing information in the field of fitness and exercise; electronic publishing services,
namely, publishing of online works of others featuring user-created text, audio, video, and graphics; providing on-line journals and web logs featuring user-created content

Trade Mark:  YOGAGLO

Registration No:  1639729
Priority Date:  8 August 2014

Goods/Services:  Class 9: Downloadable physical fitness and exercise instructional video and audio recordings with or without pre-recorded music via the Internet and wireless devices; Digital media, namely, prerecorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring fitness, exercise, music and health-related issues; Downloadable multimedia files containing artwork, text, audio, video, and Internet Web links relating to fitness, exercise, music and health-related matters; Downloadable electronic publications in the form of brochures, leaflets, and workbooks featuring fitness, exercise, music and health-related issues

Class 44: Providing informational, non-downloadable audio-visual content, specifically, photographic, audio and video presentations in the fields of health-related matters, namely, health, wellness, and nutrition via a website; Consulting services in the fields of health-related matters, namely, health, wellness, and nutrition; Providing information in the fields of health-related matters, namely, health, wellness, and nutrition

Trade Mark:  YOGAGLO

1. I will discuss the Applicant’s evidence under my discussions of the grounds on which the opposition was argued by the Opponent but observe now that it is apparent that while the Opponent has used its YogaGlo trade mark since 7 April 2009, the Applicant has used the Trade Mark in Australia since 2001 some eight years earlier.

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   […]

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

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

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

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   […]

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:For predecessor in title see section 6.

   Note 3:For priority date see section 12.

2. The Opponent here relies, inter alia, on one of the trade marks which were cited against the Trade Mark during the examination of the Application.  This trade mark is:

Registration No:         1131112
Priority Date:             23 August 2006

Services:Class 41: Education, training, learning and personal development for adults and youth; arranging and conducting competitions, educational information, learning, training, entertainment and cultural services; advice including events, seminars, conferences, courses, coaching, mentoring, key note speaking and workshops covering a variety of topics and distribution of instructional materials therewith intended to enhance company and personal potential; publication of printed information including books, e-books, texts, training, coaching and

mentoring materials; vocational guidance or career advice; providing information, including on-line, about education, training and personal development

Trade Mark:  

1. The other trade mark cited during examination (registration 1174923) has been removed from the Register for non-use at the behest of the Opponent in this matter.  The Opponent also relies on the following third party registration:

Registration No:  1039442
Priority Date:  28 January 2005

Goods/Services:  Class 16: Paper and paper articles, cardboard and cardboard articles; printed matter, newspapers, periodicals and books; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites other than furniture; instructional and teaching material other than apparatus; plastic materials for packaging (not included in other classes); printers' type and printing blocks

Class 41: Education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and training workshops; correspondence courses; education information; educational service; electronic desktop publishing; instruction services; lending libraries; mobile library services; presentation of live performances; organization of exhibitions for cultural or educational purposes; organization of competitions for education or entertainment; practical training (demonstration); production of radio and television programmes; production of shows; providing on-line electronic publications (not downloadable); publication of books; publication of electronic books and journals on-line; publication of texts (other than publicity texts); providing recreation facilities; recreation information; religious education; teaching; television entertainment and videotape film production

Trade Mark:  AGLOW

1. I do not consider that there is any serious debate that the ground under section 44(2) is established at least in relation to registration 1131112 GLOW. It is thus not necessary to discuss the relevance of the AGLOW trade mark, above. The crux of the Opponent’s concern here relates to subsection 44(4) and the way in which that subsection is applied. As Mr Skelly put it:

   The Opponent submits the evidence relied upon by the Applicant during the examination phase and in this opposition does not justify the application of s44(4) without some limitation to reflect the actual services provided by the Applicant and the geographical area in which these services were provided.

2. However, I do not consider that much of Mr Skelly’s submissions relating to subsection 44(4) are relevant.  These submissions rely heavily on case-law surrounding the application of subsection 44(3)(a): that is, the honest concurrent user of the Trade Mark and the principles stemming therefrom.

3. In contrast to subsection 44(3)(a) what I am considering here is subsection 44(4) which operates quite differently. In effect it looks beyond the provisions of subsections 44(1) or 44(2) to consider and acknowledge the fact that if an applicant establishes use from before the priority date of the citation(s) through to the date that the impugned application was filed in relation to relevant goods and/or services, that applicant has (absent demonstration of earlier use in terms of section 58A) established that it is the owner of the impugned trade mark at common law for those goods and services and that this should be recognized under the Act by the application of the provision.

4. Thus, consideration of factors such as the honesty of adoption, the degree of the use, the likelihood of confusion and so on (which are all considered under subsection 44(3)(a)) are not relevant considerations here. If there are parallels with other sections of the Act to be drawn, those parallels come more from sections of the Act under which common law ownership of trade marks is considered such as sections 58 and 58A.

5. What then of Mr Skelly’s submission that the Services should be restricted to those for which the Applicant has shown use before the relevant date and further limited to the geographical area in which they were used?

6. When a person has established use in relation to goods or services at common law, that person is entitled to succeed in an opposition to registration under section 58 in respect of those goods or services and ‘goods or services of like kind’ or which are ‘the same kind of thing’ as those for which registration is sought.  In the words of Kenny J in Colorado Group Ltd v Strandbags Group Ltd [2007] FCAC 184; (2007) 74 IPR 246 at [6]:

   The owner of a mark does not have rights at large in relation to the mark. The effect of the 1995 Act, which, in this regard, is much the same as earlier trade mark legislation, is that a trade mark must be registered in respect of particular goods or services as set out in Schedule 1 to the Trade Marks Regulations 1995 (Cth): see reg 3.1, 4.4 and Sch 1; also the 1995 Act, s 19 and 27. Ownership by first use is therefore ownership (or proprietorship) in relation to the goods or classes of goods on which the mark has first been used. The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods "of the same kind": see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 and In re Hick’s Trade Mark (1897) 22 VLR 636 at 640.

1. Kenny J went on to state at [14]-[17] of Colorado:

   Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):

   [The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.

   In Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 Gummow J briefly considered whether there was any lack of identity between the services for which the respondent sought registration and those that had been previously provided by the applicant. His Honour’s approach emphasised the absence of any material difference between the parties’ services. He held (at 514) that the evidence did not "suggest that there is any particular difference in the character or quality of the services provided by" either party other than their geographical location. Had it been important, he would not have held that "the difference in the description of services was such as to disqualify Carnival from any other success it would otherwise have had in its opposition based on its claim to proprietorship".

   In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a "same kind" inquiry from the factors for a "same description" inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as "essentially the same" may well cover a narrower field than goods "of the same description".

   As Allsop J notes, this approach conforms to the approach in the Trade Mark Office in opposition proceedings based on prior use. His Honour refers to numerous examples. Other examples can be cited. In Howe Laboratories Inc v Daemar 36 IPR 638 the services of the opponent – the treatment of motors and engines – were held not to be the same kind of thing as the applicant’s lubricant conditioning agent. In Coleman Company Inc v Igloo Products Corporation (1999) 48 IPR 158 the opponent’s insulated containers were held not to be the same kind of thing as the applicant’s insulated thermoelectric containers. In The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334, the opponent’s service of providing food and drink refreshments to cinema patrons was not the same kind of thing as the applicant’s food goods. In Nissan Jidosha Kabushiki Kaisha v Woolworths Ltd (1999) 45 IPR 649 the clocks mounted in the opponent’s vehicles were not the same kind of thing as the applicant’s clocks and watches. In Cantarella Bros Pty Ltd v Novadelta-Comercio E Industria De Cafes LDA (1998) 42 IPR 265 olive oil and olive products were held not to be the same kind of thing as coffee.

2. Having some recent familiarity with both yoga and pilates, I observe that they both are both ‘low impact’ exercises and have a similar focus on breathing and movement.  The movement in both tends to involve a series of stretches and/or poses and I note that these are so similar that pilates and yoga are at least occasionally offered in combination with each other:[5]  I consider these types of exercise are sufficiently similar that to further limit the specification ‘physical fitness instruction’ is inappropriate.  This is especially so in view of what effectively amounts to the Applicant’s claims to prior ownership of the Trade Mark.

   [5] >

   Similarly, as regards a geographical limitation, when the Applicant adopted the Trade Mark she was the owner of that trade mark at common law throughout Australia.  She continued to use the Trade Mark up to (and after) the relevant date.  If she ever ceased to be the owner of the Trade Mark throughout the whole of Australia, it is not obvious when, how or why this might have occurred.

3. I accordingly consider it to be inappropriate to limit the putative registration of the Trade Mark to a particular geographical area.

4. These conclusions contrast with consideration under paragraph 44(3)(a) where the competing claims of the owner of the later application must be balanced against the interests of the earlier registrant.

5. The Opponent has not established its ground under section 44 of the Act.

Section 59

1. Section 59 of the Act provides:

   59Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:For applicant see section 6.

2. In Americana International Ltd v Suyen Corporation [2008 ATMO 4] Hearing Officer Debrett Lyons summarised the case law under section 59 in the following way:

   ✓ filing an application for registration raises a prima facie presumption of intention to use in favour of the applicant (Aston v Harlee Manufacturing Company [1960] HCA 47; [1960] 103 CLR 391 at 401);

   ✓ that presumption is rebuttable (Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 31; Danjaq, LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18);

   ✓ once rebutted, the onus of proof shifts to the applicant (Sapient; Danjaq);

   ✓ where, under the Trade Mark Act 1955, a non-use applicant carried the initial onus of proof, case law supported the view that only slight evidence was required to shift the onus to the proprietor of the registration (Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254 (‘Estex’);

   ✓ a mere allegation of lack of intention to use is not enough by itself to shift the onus (Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430; NSW Lotteries Commission v Novamedia BV 52 IPR 638, Torrag Pty Ltd v Pah Pty Ltd [2006] ATMO 59; 70 IPR 349);

   ✓ inferences can be drawn to indicate a lack of intention to use (Danjaq; Sapient);

   ✓ prior or concurrent actions between the same parties can be a source of inference (Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient; Danjaq);

   ✓ non-use does not by itself infer lack of intention to use (Aston v Harlee; Torrag);

   ✓ failure to respond to an allegation can draw an adverse inference (Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 at 312 (‘Dunkel’));

3. And Hearing Officer Michael Kirov subsequently stated in Foxtel Management Pty Ltd v 111Pix com Ltd [2012] ATMO 29 at [23](absent footnotes):

   The issue of the relevant date and several other aspects of the s 59 ground of opposition were however addressed in some detail in two decisions issued by the Federal Court in June 2010, firstly by the Full Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437 (“Food Channel”), followed by Dodds-Streeton J in Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (“Suyen”). I draw on these two decisions in particular in the analysis which follows.

   The presumption of an intention to use

   It has long been accepted, as acknowledged by Ms Shanks, that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application. As Dodds-Streeton J put it in Suyen at [193], “an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists”. Noting that “a number of recent authorities have...endorsed its continuing application”, (“most significantly” Food Channel), her Honour continued at [197]:

   The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability. Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation. To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.

   In Food Channel itself, the Full Court had said at [67] and [68]:

   [67] Section 27(1)(b) of the Act requires that the applicant use or intend to use, or authorise use or intend to authorise use of, the trade mark. The time at which this intention must exist is the date of application... . Only a very low threshold has been set with regard to intention to use in that the very act of making the application is, without more, sufficient to establish the requisite intention. In Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605 (“Aston”) Fullagar J said (at CLR 401; ALR 611, footnote omitted):

   There is another element mentioned by Dixon J in the Shell Co’s Case, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent or the person aggrieved, of proving the absence of intention.

   [68] Fullagar J went on to say (also at CLR 401; ALR 611):

   [Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.] A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use ... On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars ...

   The nature of the intention

   As indicated by Fullagar J in the above quote from Aston, an applicant’s intention need not be “to use immediately or within any limited time”. Moreover, in his Honour’s consideration an applicant for three marks might be entitled to register them even where “[he] had not made up his mind as to which two he would use”. What, then, must the actual nature of the presumed intention be?

   Ms Shanks noted in her submissions that Fullagar J relied in part in Aston on the UK case of In re Registered Trade Marks of John Batt& Co. [1898] 2 Ch 432; [1899] AC 428 (“John Batt”), concluding his remarks (at 401) by noting that “the effect of [John Batt], is, I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J and the Court of Appeal”. Ms Shanks also referred to the UK case of Re Ducker’s Trade Mark [1929] 1 Ch 113 (“Ducker’s”) and to the judgment of McClelland J in Ritz Hotel Ltd v Charles of the Ritz and Another (1988) 15 NSWLR 158 (“Ritz”). All four of these cases were considered by Dodds-Streeton J in Suyen, who quoted (at [198]) McClelland J’s conclusion that:

   [i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any given time.

   Her Honour then discussed the Ritz case in some detail (at [199] – [206]) and, as her discussion bears on my conclusions in the present oppositions, it is reproduced below:

   [199] In [Ritz], the plaintiff, as a person aggrieved, sought rectification of the register and removal for non-use of five registered trade marks, including CHARLES OF THE RITZ, RITZ and RITZ LIQUI CRèME, in relation to various goods, including toiletries, perfumes and soaps. The plaintiff alleged that the first defendant lacked “a bona fide intention to use the mark” and was therefore not the proprietor of an unused mark under the 1955 Act. McLelland J regarded “intention to use” in that context as a paraphrase of the statutory phrase “proposed to be used ... in relation to goods”.

   [200] His Honour referred to Aston and John Batt... . In John Batt, the applicant had registered a large number of trade marks, had offered many of them for sale, had never traded in the relevant goods and declined to submit to cross-examination. Lord Lindley MR for the English Court of Appeal stated (at 439–40):

   Can a man properly register a trade-mark for goods in which he does not deal or intend to deal? — meaning by intending to deal having at the time of registration some definite and present intention to deal in certain goods ... and not a mere general intention of extending his business at some future time to anything which he may think desirable.

   [201] McLelland J also referred to Ducker’s at 121 where Lord Hanworth MR stated that “I think that the words ‘proposed to be used’ mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered”.

   [202] McLelland J held that the original registration of one of the trade marks (RITZ LIQUI CRèME) was obtained by fraud, because correspondence in evidence revealed that the application was actuated only by fears that an application to register a different trade mark might be unsuccessful.

   [203] On the basis of that evidence and the managing director’s concession that the applicant had no intention to sell products or license use of the name in Australia until many years later, McLelland J found that there was no bona fide intention to use the mark at the date of the application.

   [204] His Honour did not, however, find that there was no intention to use two other opposed marks, in the absence of such a direct concession or evidence to the contrary. His Honour stated at NSWLR 205; ALR 266; IPR 466:

   ... there is no evidence from which I would be prepared to conclude that the first defendant did not as at the date of the respective applications ... propose to use those marks. The fact that the mark CHARLES OF THE RITZ was never used in Australia in relation to any of the goods in respect of which [one mark] is registered ... does not to my mind establish the absence of any proposed use of that mark at the relevant date. In the case of [the other mark] there was some actual use by the first defendant in Australia in relation to at least some of the goods in respect of which it is registered ...

   [205] In Aston, Fullagar J also discussed the nature of the intention. His Honour stated at CLR 401; ALR 611 that:

   A manufacturer of (say) confectionary would, I should suppose, be entitled to register three trade marks in relation to confectionary, though he intended only to use two of them and had not made up the mind as to which two he would use.

   [206] Fullagar J’s frequently reiterated observation qualifies the absolute requirement for a real and definite intention to use each particular mark, at least in the context of multiple related applications in respect of the same goods.

   With respect to this last point made by Dodds-Streeton J (at [206]) I again note in passing […] that the Holder is the owner of Australian registrations 1214973 FILMON and 1214974 FILMON Logo, both originally IRDAs and with the same priority date and covering the identical goods and services in Classes 9, 35, 38 and 41 as opposed IRDAs 1227986 and 1227987.

   The relevant date

   As acknowledged by Ms Shanks at the hearing the issue of the relevant date under s 59 was addressed by the Full Court in Food Channel and by Dodds-Streeton J in Suyen. While Dodds-Streeton J in Suyen could see some merit in the view that the requisite intention be an ongoing one extending beyond the filing date, she nevertheless followed the Full Court’s view to the contrary in Food Channel, noting at [147] that:

   There has been conflicting, albeit relatively sparse, authority and commentary on whether the requisite intention under s 59 is to be assessed at the date of filing the application to register the trade mark or at the time of the opposition proceeding (whether it be on the date of filing the notice of opposition, the hearing of the notice of opposition or the last filing of evidence in relation to it). Very recently, after the hearing of this appeal but before the publication of these reasons, the Full Federal Court in [Food Channel] held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”: at [74].

   In the present oppositions, accordingly, I confirm I am proceeding on the basis that the relevant date for assessing the Holder’s intention to use the Trade Marks is the date the applications to extend protection to Australia were made, namely 23 October 2007 (hereafter “the Relevant Date”). I likewise acknowledge that the Holder’s actual use or non-use of the Trade Marks after that date, while certainly not determinative, “may be relevant” in inferring the Holder’s intention as at the Relevant Date.

   The nature of the Opponent’s onus

   Given that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application it is clear that, in the absence of admissions by the applicant, an opponent bears the onus of displacing this presumed intention. In Suyen Dodds-Streeton J nevertheless observed that there was “conflicting authority” as to the nature of an opponent’s onus in an appeal, explaining at [179]:

   One line of authority indicates that an opponent bears a special onus, according to which it cannot succeed unless it is clear that the trade mark should not be registered. Another line of authority, advocated by [the opponent before her], applies the ordinary standard of the balance of probabilities.

   Her Honour considered that neither the Full Court in Food Channel nor herself in Suyen needed to resolve this issue on the facts before them. In the present oppositions, brought pursuant to s 52 of the Act, I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.

   Shift of onus

   That said, as Dodds-Streeton J noted in Suyen at [190]:

   Irrespective of the standard of an opponent’s onus, where it makes a prima facie case for lack of intention in proceedings under s 59, the evidentiary onus may shift to an applicant who, although on notice that its intention is challenged, fails to respond to the opponent’s evidence.

   Her Honour’s words reflect those of Jacobson J in Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 (“Health World”) in relation to s 59, which were also quoted with approval by the Full Court in Food Channel (at [38]). In the relevant passages, at [161] to [163], Jacobson J said:

   [161] The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; A Dufty and J Lahore, Lahore, Patents Trade Marks and Related Rights, LexisNexis Butterworths, Sydney, 2006 at [55,580].

   [162] However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

   [163] The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

   I note that Jacobson J in the above quoted passage, Dodds-Streeton J in Suyen, and the Full Court in Food Channel all appear to agree that lack of intention might be inferred “where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence”. It is nevertheless clear from all three judgments that such an inference will not be drawn lightly. Jacobson J, for example, cited two such cases, being Philip Morris Products SA v Sean Ngu (“Philip Morris”) and Tommy Hilfiger Licensing Inc v Tan (“Tommy Hilfiger”), both involving somewhat particular circumstances. In Philip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce (unlike the Holder in the present oppositions), nor did it file any written submissions or appear at the hearing. Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting there had been no actual use in the 20 or so months since the opposed application was filed required some formal “rebuttal, denial or answer” from the applicant. As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application. Moreover, Dodds-Streeton J stressed in Suyen at [207] that:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

   In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non-use:

   [212] Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439–40.

   [213] In Food Channel, the Full Court observed that “only a low threshold has been set with regard to intention to use”: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of “cybersquatting” and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

   [214] Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

   [215] In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute “the controlling mind” of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that “we wanted to widen our business” to use the mark on any goods or products the company might make. [Jacobson J’s decision was upheld by the Full Court, which did not consider the intention issue (although it was a ground of appeal). The High Court allowed an appeal from the decision of the Full Court and has remitted the proceeding to the Full Court for determination of the remaining issues.]

   [216] In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and “controlling mind”) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was “some evidence not found to be unreliable” that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that “in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue”: at [83].

   Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the “website did not evidence any intention to use [the trade mark] in Australia” and, inter alia, did not appear to “target, and was not accessed by, Australian-based purchasers”. Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus, stating at [236]:

   ...neither the 2006 USA notice of opposition nor the content of [the applicant’s] website and online store constituted compelling evidence of the absence of the requisite intention. To the extent that either or both matters required an explanation, it was provided by the positive evidence advanced by [the applicant] of its intention to use [the trade mark] in future expansion of its commercial operations to Australia.

   More generally, her Honour was somewhat sceptical as to the “utility” of the shift of onus principle at all in cases where an applicant has filed evidence, stating at [228] and [229]:

   [228] As in the hearing before the delegate, in which [the applicant] filed no evidence, [the opponent] on appeal sought to rely on particular evidence to shift to [the applicant] the evidentiary burden which, it contended, was not discharged.

   [229] The utility of that approach in the context of an appeal by rehearing in which both parties file evidence is questionable, as whether the applicant lacked the requisite intention must be determined on the evidence as a whole. The significance of discrete elements of evidence led by the opponent and unanswered by the applicant below must be viewed in the context of any different and additional evidence filed in the appeal by rehearing.

1. In relation to this ground Mr Skelly submits:

   The Applicant’s intention to use was placed squarely in issue in paragraph 6 of the First Skelly Declaration (as corrected in the Second Skelly Declaration) and in the amended Statement of Grounds and Particulars.

   The only physical fitness instruction services intended to be provided by the Applicant under or by reference to the opposed trade mark are pilates instruction services.

   The Applicant’s own evidence indicates an absence of intention to provide yoga instruction or any other physical fitness instruction services.

   From 2002 up until filing the Application on 24 May 2014, the only physical fitness instruction services provided by the Applicant were pilates instruction services. Since that time, the applicant has not provided any other physical fitness instruction services in class 41.

   In paragraph 3 of the Second Brown Declaration, the Applicant states “I provide services in remedial and specialist pilates as well as Bowen and massage therapy to my clients”. In Paragraph 4 the Applicant states “I do not offer services in yoga, and never have done”. In paragraph 12 the Applicant states “Mr Skelly knows perfectly well that I do not practice yoga”.

   Despite intention being placed into issue, the Applicant has not tendered any evidence to rebut the contention that that her intention at the time of filing the Application on 24 May 2012 was to only continue to use the opposed trade mark for pilates instruction services in class 41. Indeed, the Applicant’s own evidence reinforces that her intention was confined to the provision of pilates instruction services and no other types physical fitness instruction. At the very least, the Applicant‟s evidence confirms an absence of intention to provide yoga instruction services.

   Under this ground of opposition, the specification of the Application should be restricted to “pilates instruction” in class 41.

2. Of course, the Applicant was only properly ‘put on notice’ that section 59 was seriously being pursued as a ground in the Opponent’s evidence in reply since, in his evidence in support Mr Skelly had mistakenly stated that the Applicant provided yoga exercises and his declaration correcting that misstatement was filed out of time then refiled as evidence in reply after the Applicant had filed its evidence in answer.

3. I further consider that, at one level, the Opponent’s submissions are inherently incongruous and seek from the Applicant a level of conduct that the Opponent has itself eschewed as far as its own specifications of goods and services are concerned. The Opponent’s specification quite clearly includes pilates related goods and services despite both the presence of the word ‘yoga’ in its trade mark and the Opponent’s allegations of the likelihood of deception or confusion which it argues under the section 60 ground. These factors reflect on the Opponent’s own intentions to use its own YogaGlo trade mark beyond ‘yoga’ exercises. Additionally, as I have discussed under the subparagraph 44(4) ground, the Applicant has, to all intents, established her ownership of the Trade Mark in relation to pilates classes and other exercise classes which are the same kind of thing as pilates classes which I consider includes yoga classes. The Opponent, it will be remembered, is the late-comer here and must establish its opposition on the balance of probabilities. Because of the foregoing, it is hard to regard the Opponent’s section 59 argument as being anything more than ‘tongue in cheek’.

4. Notwithstanding the above difficulties, I note that the Applicant’s statements which were made some time after the Application was filed say nothing about what her future intentions might have been at the relevant date (or, indeed at the time that she made them).  Ms Brown merely states:

   I do not offer services in yoga, and never have done.

5. I do not consider that the onus has shifted onto the Applicant and the Opponent has not established this ground of opposition.

Section 60

1. Section 60 of the Act provides:

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

   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.

2. It is a threshold requirement of section 60 that a trade mark relied upon by an opponent has a reputation in Australia.

3. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) Kenny J said at [81]:

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

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

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

and (albeit in relation to subsection 28(a) of the Trade Marks Act 1955) Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Lte [2000] FCA 1587; (2000) 50 IPR 1 appositely said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

1. As I observed in my discussion of the Opponent’s evidence, the figures provided by the Opponent suggest that before the relevant date the Opponent’s claims as to the FitnessGlo sessions are to the provision in Australia of 6600 Internet sessions over 1500 days or 4.4 sessions a day on dates which include some irrelevant ones after the relevant date.  Similarly the YogaGlo figures reflect access to the YogaGlo website by an average of approximately 108 Australians per day prior to the relevant date.  These figures are likely to reflect (rather than a fresh 108 people a day) a rather lower number of people who use the Opponent’s services on a repeating basis.  This is a quite modest level of usage and might be regarded, as I have said, as being low to moderate for a stand-alone suburban gymnasium or exercise centre.

2. These figures being quite low are not suggestive of (to paraphrase Kenny J in McCormick) any sort of “recognition of the YogaGlo or FitnessGlo trade marks by the public generally” (and hence reputation) such that the Opponent could found this ground.  Additionally, as I have noted, the Opponent has not expressly stated that it used its trade marks in relation to those Internet sessions and there is no corroborative evidence which supports its claims such as printouts from Wayback Machine[6] which show those websites at the dates that such usage is claimed.

   [6] >

   A further difficulty for the Opponent in founding this ground is that its use of its trade mark started well after the Applicant first used the Trade Mark.  Under such circumstances it is naturally difficult for an opponent to claim that it is the applicant’s use of the Trade Mark which would confuse or deceive.

3. The Opponent has not established its opposition under section 60 of the Act.

Paragraph 42(b)

1. Paragraph 42(b) provides:

   42Trade mark scandalous or its use contrary to law

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

   […]

   (b)its use would be contrary to law.

2. Here the Opponent alleges that the use of the Trade Mark by the Applicant would be contrary to the Australian Consumer Law (‘the ACL’), which is contained in Schedule 2 to the Competition and Consumer Act 2010, relying upon subsection 18(1) and subsections (g) and (h) of s 29, which subsections correspond to section 52 and subparagraphs 53(c) and (d) of the now repealed Trade Practices Act 1974 (‘the TPA’). Schedule 2 relevantly provides:

   Section 18: Misleading or deceptive conduct

   (1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

   Section 29: False or misleading representations about goods or services

   (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

   …

   (g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

   (h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

   …

3. However, these provisions are to be considered at a higher standard (mislead or deceive) than similar considerations under section 60 of the Act which are at the lower standard of ‘confuse or deceive’. It thus usually follows that if an opponent has not established its opposition under section 60 of the Act then neither will it establish its opposition under paragraph 42(b) when arguing that use of the Trade Mark is contrary to the ACL. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1A IPR 684 at 688, Gibbs CJ said with respect to s 52 of the TPA:

   In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 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 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

4. The Opponent has not established this ground of opposition.

Decision

1. Section 55(1) of the Act relevantly provides that, 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.

2. I have found the Opponent has not established and of the grounds pressed at the hearing.  Application 1492065 may accordingly 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 the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Having been successful, the Applicant is entitled to her costs which I award against the Opponent at the official scale set out at Schedule 8 to the Regulations.

Iain Thompson
Hearing Officer
Trade Marks Hearings
26 October 2015