Trade Mark News & Information

Trademark Registration – ATMO Decisions – April 2018

AEGIR MARINE PTY LTD v AEGIR-Marine B.V. [2018] ATMO 45 (3 April 2018)

Successful opposition by Aegir Marine Pty Ltd to an application for removal of its trademark registration for AEGIR MARINE Logo alleging non-use for the three years period ending on 23 July 2016 for various goods and services in classes 9, 41, 42 and 45.

The opponent’s evidence included a statement of intention to use the registered mark as well as material showing genuine commercial use of the registered mark for a significant portion of the registered goods and services.

The removal applicant argued that the statement going to intention to use did not expressly mention “in good faith”, but the delegate considered that was not necessary. The opponent had provided a clear explanation for adopting the registered mark and clear evidence of genuine commercial use of it.

 

TOM Organic Pty Ltd [2018] ATMO 46 (4 April 2018)

An application for trademark registration of Tooshies by TOM filed on 23 February 2016 for diapers and medicated lotion in class 5 and various paper goods and wipes in class 16 was refused based on a prior registration for Tushies (Stylised) covering various wipes in classes 3, 5 and 16.

The delegate agreed with the Examiner that the applied for mark was deceptively similar to Tushies (Stylised). Further, the applicant’s wipes, nappies and disposable nappy changing products were regarded as similar to the wipes covered by this registered mark.

There was also a prior registration for “tooshie” in class 25 covering swimwear. While the applied for mark was deceptively similar to this registered mark, the delegate commented that disposable underpants in class 5 may not be similar to swimwear in class 25.

The applicant also relied on evidence of use of the applied for mark without confusion, but it was after the filing date and not relevant for prior continuous use, honest concurrent use or other circumstances.

 

The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd [2018] ATMO 47 (5 April 2018)

Successful opposition by The BBQ Store to trade mark registration of the composite mark shown below filed on 13 February 2015 for various class 35 retail and wholesale services including in relation to grills, barbeques and outdoor cooking appliances

Trademark Registration The BBQ store Logo

Both parties filed evidence and participated in the hearing.

An earlier decision involving the same parties and trade marks in the context of class 11 goods is reported here where the opponent was unsuccessful in preventing registration of the applicant’s mark.

The s44 ground was established based on the opponent’s prior trademark registration dating from 20 January 2015 for the mark shown below covering equivalent retail and wholesale services

Trademarkk Registration The BBQ Store

However, the applicant had been using the applied for mark since July 2012 and the evidence disclosed the parties had been coexisting for around 5 years; so the hearing officer applied the s44(4) prior continuous use provision in favour of the applicant.

Nonetheless, the opponent successfully relied on s58A and established that it had prior and continuous use of its deceptively similar mark from a date before the applicant’s earliest use in July 2012 and so registration of the applicant’s mark was refused.

There is no indication in the decision as to whether the applicant sought to rely on honest concurrent use under s44(3)(a).

The applicant has another class 11 application to register a similar trade mark which is also being opposed by the opponent.

 

Council of the City of Shellharbour v Bright Events Pty Ltd [2018] ATMO 48 (6 April 2018)

Successful opposition by Shellharbour Council to applications for trademark registration of WINGS OVER ILLAWARRA word and logo marks filed on 23 April 2015 for arranging air shows in class 41.

Both parties filed evidence and participated in the hearing. The delegate allowed the applicant’s late filed evidence which operated to correct and explain an error in an earlier declaration already in evidence. Rather curiously, the opponent claimed confidentiality over the entirety of its evidence.

The Wings Over Illawarra aviation event was held annually since 2007 at the Illawarra Regional Airport operated by the opponent. The applicant was appointed to conduct the  event for a five year period from 2015.

The s58 ownership ground was argued only in relation to the word mark. The delegate found the Wings Over Illawarra Committee (of which the opponent was a member) as the first user and owner of the word mark. As such, the applicant was not the owner of this word mark and this ground of opposition was established.

The s60 reputation ground was also upheld in connection with the logo mark. The Committee had operated air shows under the WINGS OVER ILLAWARRA mark prior to 23 April 2015 and this mark is likely to have acquired a reputation in relation to the arranging of air shows in the Illawarra region. Further, use of the applied for logo mark by the applicant would be likely to cause confusion in that a number of persons would be caused to wonder whether an air show operated under the logo mark comes from the same source as the air show operated by the Committee under the word mark.

 

REA Group Limited v realestateasia.com.au Pty Limited [2018] ATMO 49 (6 April 2018)

Successful opposition by REA Group to an application for trademark registration of the composite mark shown below filed on 17 June 2015 for various real estate and telecommunications related services in classes 35, 36, 38 and 42

Trademark Registration Real Estate Asia Logo

The s60 reputation ground was established based on the opponent’s Australian reputation derived from use of its realestate.com.au logo trade mark since 1998. Given this reputation and the close thematic and physical similarities between it and the applied for mark, the delegate was satisfied that the use of the applied for mark would be likely to deceive or cause confusion.

 

Philip Desmond Cowley and Elizabeth Ann O’Connor-Cowley v Kelli Jane Marchewka [2018] ATMO 50 (11 April 2018)

Successful opposition by Cowley to applications for trademark registration of Meenyminy filed on 25 August 2015 for graphic prints in class 16 and apparel in class 25.

The opponents owned prior registrations for the trade mark “eeni meeni miini moh” (in plain word and stylised form), as well as “eeni meeni” and “miini moh” (both in plain word form) which covered relevant class 25 goods. They operate the website at www.eenimeeni.com/ and have sold children’s clothing and other products including greeting cards via this website and through other third party retail stores since 2001 under the “eeni meeni miini moh” word and logo marks. Art prints were introduced from 31 August 2015.

The opposition was upheld under the s60 reputation ground with the delegate being satisfied the opponents had established a relevant Australian reputation in their “eeni meeni miini moh” marks and that persons encountering the applied for mark would be caused to wonder whether the relevant goods emanate from the opponents or if there is some other connection in the course of trade with the opponents.

 

Biofarma v Paratek Pharmaceuticals Inc. [2018] ATMO 51 (11 April 2018)

Successful opposition by Biofarma to an application for trademark registration of NUALTO filed on 15 December 2015 for antibiotics in class 5.

The s44 ground of opposition with established with the opponent relying on its prior registration for the trademark NOALTA covering pharmaceutical preparations generally. The delegate considered NUALTO was deceptively similar to NOALTA. Significantly, given that notionally the respective trade marks may be used on precisely the same goods, the delegate did not consider the risk of confusion is sufficiently mitigated by the differences between the marks, notwithstanding the higher degree of attention that medical professionals are likely to pay to the various names they encounter.

 

Mr Car Keys Pty Ltd v Paul John Jones [2018] ATMO 52 (16 April 2018)

Successful opposition by My Car Keys to an application for trademark registration of MR AUTO KEYS filed on 18 December 2015 for encoded keys in class 9 and key cutting services in class 40.

The opponent had been using the trademark MR CAR KEYS since November 2009 and had been contacted by the applicant in October 2015 to supply goods and services. There were also discussions about future franchising opportunities. At that time the applicant was operating under the Autoscan name.

The s62A bad faith ground was established.

 

Energy Beverages LLC v M.D Visage Pty Ltd [2018] ATMO 53 (16 April 2018)

Successful opposition by Energy Beverages to an application for trademark registration of ProBurn filed on 21 November 2014 for various dietetic goods in class 5 and other foods and beverages in classes 29, 30 and 32 as well as other goods in classes 18, 21, 25.

The opponent succeeded under the s44 ground, relying on its prior registrations for the trademark BURN in class 32.

The applicant did not file any evidence or participate in the hearing.

The delegate considered that all of the applicant’s class 32 goods and some of its goods in classes 5, 29 and 30 were similar to the class 32 goods covered by the opponent’s BURN registrations. However, the applicant’s goods in classes 18, 21 and 25 were not similar. Further, the applied for ProBurn mark was deceptively similar to BURN. The prefix “Pro” does not dilute the prominence of the word “Burn” in the ProBurn mark. This prefix qualifies or adds to the word “Burn”.

The opponent also relied on the s59 lack of intention to use ground, but the opponent’s evidence as to non-use of the applied for mark did not imply a lack of intention to use and the evidence relied upon was insufficient to shift the onus back to the applicant.

 

STI Technologies (Holdings) Unit Trust v Google Inc [2018] ATMO 54 (17 April 2018)

Partly successful opposition by STI to an application for removal of its trademark registration for DVS alleging non-use for the three years period ending on 2 February 2016 for various goods in classes 9 and 12 for vehicles.

The delegate admitted late evidence filed by the opponent due to its high probative value.

There was use of the DVS trade mark during the relevant period for some relevant goods by Directed Electronics, but the delegate was not satisfied this use was authorised by the registered owner. Nonetheless, the delegated exercised discretion in favour of leaving the DVS mark on the Register for limited goods in classes 9 and 12.

 

Darley Stud Management Company Limited v Kevin Francis Darley [2018] ATMO 55 (18 April 2018)

Successful opposition by Darley Stud to an application for removal of its trademark registration for DARLEY alleging non-use for the three years period ending on 5 September 2016 for horse stud and breeding services in class 44.

The delegate considered the evidence supported use of the DARLEY mark by Godolphin. While the evidence stated that Godolphin is a member of the same corporate group as the opponent and has an unwritten license from the opponent to use the DARLEY mark, there was no evidence of the control being exercised over Godolphin. As a result, the delegate was not satisfied this use was authorised by the opponent. However, given the reputation of the DARLEY mark and the risk of confusion if the registration was to be removed, the delegate exercised discretion in favour of the opponent and directed the DARLEY trademark registration to remain without any limitation.

 

Conga Foods Pty Ltd [2018] ATMO 56 (19 April 2018)

An application for trademark registration of ASSORTI filed on 9 November 2016 for various products in classes 29 and 30 was refused.

The delegate agreed with the Examiner that the word “assorti” did not have sufficient inherent adaptation to distinguish and there was no supporting evidence of use to show capacity to distinguish.

The word “assorti” is of French origin and the delegate referred to the applicant’s evidence in finding that the ordinary signification of this word is “matched” or “matching” to an informed speaker of the French language in Australia. The delegate then went on to find that due to its descriptive nature when used in the appropriate context, this word is one which other traders are likely, without improper motive, to think of and wish to use in connection with similar goods.

This decision does appear to raise the bar on ordinary signification of a foreign word. The delegate assessed this having regard to an informed speaker of the French language in Australia, whereas the target market test in the Cantarella case is much broader.

 

Monster Energy Company v Rodney Jane Racing Pty Ltd as Trustee of the Rodney Jane Racing Trust [2018] ATMO 57 (24 April 2018)

Successful opposition by Monster Energy to applications for trademark registration of the composite marks shown below filed on 27 January 2015 for alloy wheels for automobiles in class 12.

Trademark Registration Monster Logo1

Trademark Registration Monster Logo2

Trademark Registration Monster Wheels Logo

The opponent prevailed under the s60 reputation ground by relying on the reputation of its MONSTER ENERGY trade marks, particularly in connection with energy drinks sold in Australia since 2006, but also in connection with endorsements and sponsorships of athletic competitions and other events including motorsports events.

The delegate was understandably satisfied the opponent has acquired a significant Australian reputation in its MONSTER ENERGY trade marks for energy drinks. Although there was no brand extension to other products, the delegate was influenced by the opponent’s strong and significant presence within the automobile sporting industry and considered a significant number of consumers would, at the very least, experience a reasonable doubt as to the existence of some sort of connection and hence a likelihood of confusion.

The delegate was dismissive of the applicant’s argument that purchasers of the opponent’s energy drinks are involved consumers and can be expected to remember the very different get up and style of the opponent’s MONSTER ENERGY marks.

 

Kevin Murphy Asia Pte Ltd v Lab Brands Limited [2018] ATMO 58 (27 April 2018)

This involved cross oppositions.

Lab Brands successfully opposed registration of the trade mark SKINCARE FOR YOUR HAIR filed by Kevin Murphy Asia on 23 March 2016 for hair care products in class 3. It relied on the s41 distinctiveness ground of opposition. The delegate considered this phrase contains very little inherent adaptation to distinguish. There was also evidence of other parties using this phrase, or other similar words, descriptively. Further, Kevin Murphy Asia’s evidence disclosed predominantly use of SKINCARE FOR YOUR HAIR in conjunction with the KEVIN MURPHY trade mark. Consequently, the evidence was insufficient to show this phrase had the capacity to distinguish the relevant goods.

Kevin Murphy Asia was unsuccessful in its opposition to trademark registration of LONDON LABS. SKINCARE FOR HAIR filed by Lab Brands on 16 November 2015 for various hair care products in class 3, brushes in class 21 and retail services in class 35. The s44 ground was unavailable because its SKINCARE FOR YOUR HAIR trademark application was filed after the LONDON LABS. SKINCARE FOR HAIR application, so it relied on the s60 reputation ground. However, the evidence was insufficient to satisfy the delegate that its SKINCARE FOR YOUR HAIR trade mark had sufficient reputation in Australia as at 16 November 2015.

 

Patriot Campers Pty Ltd v Sunland RV Pty Ltd [2018] ATMO 59 (30 April 2018)

Unsuccessful opposition by Patriot Campers to trademark registration of the PATRIOT word and logo (shown below) marks filed on 27 March 2015 and 8 April 2016 respectively for various caravans and mobile homes in class 12.

Trademark Registration Patriot Logo

The opponent relied on its PATRIOT CAMPERS word mark and logo mark shown below

Trademark Registration Patriot Campers Logo

The opponent had applications to register its PATRIOT CAMPERS word and logo marks which were filed on 16 September 2015 and were still pending at the time of the hearing.

The evidence disclosed the applicant has used its PATRIOT trade marks from 2010 for caravans, whereas the opponent has used its PATRIOT CAMPERS marks from mid to late 2013 for camper trailers and load bearing trailers. The delegate took the view that, while camper trailers and caravans are not identical goods, they are the same sort of thing.

The delegate concluded the PATRIOT and PATRIOT CAMPERS word marks were substantially identical because the word PATRIOT was the essential feature of the PATRIOT CAMPERS mark. Similarly, the PATRIOT Logo mark and PATRIOT CAMPERS word mark were also substantially identical.

In light of these findings, the s58 ownership ground failed because the applicant was the senior user of its PATRIOT word and logo marks for the same kind of goods.

The s60 ground also failed. The opponent’s evidence established a modest reputation in its PATRIOT CAMPERS marks through use over a period of about 2 years (from mid to late June 2013 up to the 27 March 2015 filing date of the PATRIOT word mark) in the field of outdoor recreational vehicles. However, the applicant had acquired a quite significant reputation through continuous use of its PATRIOT marks since 2010 and any confusion could be attributed to the opponent’s later use of its PATRIOT CAMPERS marks.

Under s44, the opponent’s applications to register its PATRIOT CAMPERS word and logo marks filed on 16 September 2015 had priority over the applicant’s trade mark application for its PATRIOT logo mark (filed on 8 April 2016), but not the PATRIOT word mark application (filed on 27 March 2015). However, the applicant was entitled to rely on s44(4) based on prior continuous use of its PATRIOT logo mark. The opponent could not rely on s58A to defeat this because it was not the first user of its PATRIOT CAMPERS marks.

 

David Jones Pty Ltd v Pharmaline Pty Ltd [2018] ATMO 60 (30 April 2018)

Successful opposition by David Jones to applications for trademark registration of DAVID JONES PHARMACY filed on 22 October 2014 and 5 March 2015 for pharmacy retail services in class 35 and medical related services in class 44.

Both parties filed evidence and participated at the hearing. The opponent did not object to some late evidence filed by the applicant relating to evidence filed by it during examination of its trade mark applications. Both parties claimed confidentiality over the entirety of their evidence.

The opponent owned various prior registrations for its various DAVID JONES trade marks, but the applicant was able to achieve acceptance of its trademark applications under the s44(4) prior continuous use provision.

The opponent’s DAVID JONES trade mark has a long history of use commencing from 1838 with the opening of its first retail store in Sydney. The history of use of the applicant’s trade mark dates back to 1973 with a pharmacy business in the Melbourne suburb of Murrumbeena.

The opponent prevailed under the s60 reputation ground (which is independent of s44). Its DAVID JONES trade mark clearly had acquired a strong reputation throughout Australia and the delegate was satisfied as to the risk of confusion.