Trade Mark News & Information

Trademark Registration – ATMO Decisions – August 2018

Onkyo Kabushiki Kaisha doing business as Onkyo Corporation v Dynaudio Holdings A/S [2018] ATMO 120 (1 August 2018)

Unsuccessful opposition by Dynaudio to trademark registration of a composite mark containing the words Dynamic Audio Amplification as shown below filed on 22 April 2016 for a broad range of goods in class 9.

Trademark Registration Dynamic Audio Amplification Logo

Both parties filed evidence and Onkyo filed submissions, but neither party participated at the hearing.

As a preliminary issue, the delegate decided to admit late filed evidence by Onkyo under Reg 21.19. This concerned an Exhibit which was clearly intended to be filed but omitted due to a clerical error.

The s41 ground failed as the delegate considered the applied for composite mark is inherently adapted to distinguish the Applicant’s Goods from the goods or services of other persons.

The s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to the opponent’s prior DYNAUDIO trademark registration.

Under the s58 ownership ground the opponent relied on earlier use of its DYNAUDIO mark, but this ground necessarily failed because the delegate did not consider this mark was substantially identical with the applied for mark.

Under the s60 ground, the delegate was satisfied the opponent’s DYNAUDIO mark had acquired an Australian reputation, but did not consider there would be a likelihood of deception or confusion due to the differences in the respective marks.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

The s43 ground also failed. The delegate was not satisfied as to any connotation within the applied for mark which is likely to result in deception or confusion.

 

Margaret Woods and Lisa Reynolds v Viktoria Teed [2018] ATMO 121 (7 August 2018)

Successful opposition by Woods and Reynolds to trade mark registration of VIKTORIA (Stylised) filed on 24 May 2016 for various shoes in class 25.

The parties relied on evidence and submissions, but did not participate in the hearing.

The opponents prevailed under the s44 ground. The delegate considered the applied for mark was deceptively similar to at least their prior trade mark registration for VIKTORIA + WOODS covering similar goods.

 

Sebastiano John Amenta v Tina Estelle Lowe & Leroi Harlan Waddington [2018] ATMO 122 (7 August 2018)

Successful opposition by Lowe and Waddington to trademark registration of the composite ROUTE AUS 66 Logo mark shown below filed on 27 February 2015 for t-shirts and hooded jumpers in class 25

Trademark Registration Route Aus 66 Logo

This mark was accepted with a s44(4) endorsement indicating reliance on prior continuous use.

The applicant filed evidence, but the opponent did not. Neither party relied on submissions or participated at the hearing.

Given that the opponents did not file any evidence, they could only rely on matter in their Statement of Grounds and Particulars, namely their prior trademark registrations. In particular, a prior registration for the ROUTE 66 Logo mark shown below covering similar goods in class 25:

Trademark Registration Route 66 Logo

The delegate considered the applied for mark was deceptively similar to this prior registered mark and hence the s44 ground of opposition was made out. The delegate then went on to consider the applicant’s evidence and concluded it was insufficient to establish honest concurrent use or prior continuous use.

 

IG Group Limited v International Capital Markets Pty Ltd [2018] ATMO 132 (7 August 2018)

Unsuccessful opposition by IG Group to trademark registration of IC Markets Logo shown below filed on 14 March 2016 for various financial services in class 36.

Trademark Registration IC Markets Logo

The opponent relied on use and registration of various trade marks for financial derivative services including

Trademark Registration IG Logo   Trademark Registration IG Markets Logo

The s44 ground failed because the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to any of the opponent’s prior registered marks. The delegate noted “the relevant market for the parties’ respective services would comprise financially savvy consumers who are considering investing substantial amounts of money. Such consumers would be aware and careful in the selection of various service providers in the market and are unlikely to be making decisions based on momentary recollection or hastily remembered logos”.

The s60 ground failed with the delegate commenting that, even given the Australian reputation of the opponent’s marks, there is unlikely to be deception or confusion given the differences in the respective marks and nature of the market for these services.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

The s62A bad faith ground was also not established.

 

Naurus Pvt Ltd v Ahmed Foods Pvt. Ltd. [2018] ATMO 123 (8 August 2018)

Unsuccessful opposition by Ahmed Foods to trademark registration of AHMED KARACHI HALWA MERCHANT filed on 24 June 2015 for various foodstuffs in classes 29 and 30. Acceptance was achieved based on prior continuous use under s44(4).

The parties filed evidence, but did not file submissions or participate at the hearing.

Under the s44 ground, the opponent relied on its prior registered mark shown below dating from 7 August 2013 for various goods in classes 29, 30 and 32:

Trademark Registration Ahmed Foods Logo

The delegate considered the applied for mark to be deceptively similar to this registered mark because the essential feature of the respective marks is the word AHMED and so s44(1) was satisfied. However, the applicant could rely on prior continuous use under s44(4) based on use of the applied for mark from before 2009 at least for halva and gulub jamun. Rather curiously, the specification of the applied for mark was not restricted to these particular goods.

The opponent also relied on s62(b) and alleged the evidence filed by the applicant under s44(4) was false in material particulars, but the delegate did not find any basis for this allegation.

 

Rajendra Patel v iNova Pharmaceuticals (Singapore) Pte [2018] ATMO 124 (8 August 2018)

Successful opposition by iNova Pharmaceuticals to trademark registration of DUROFLAM filed on 21 March 2016 for various medicated lozenges in class 5.

The opponent owned trademark registrations for DURO-TUSS, DIFFLAM and DUROTRAM which it relied upon under the s44 ground of opposition.

The delegate found in favour of the opponent under the s60 ground based on the Australian reputation of the DURO-TUSS and DIFFLAM trade marks arising from their use in relation to medicated cough syrups, preparations, and lozenges for some thirty years before the filing date of the applied for DUROFLAM mark. The delegate considered that consumers would wonder whether goods branded with the DUROFLAM mark were the same as, or related to, goods branded with the DURO-TUSS mark or the DIFFLAM mark, and whether they emanated from the opponent.

 

Monster Energy Company v Fernbrew Pty Limited [2018] ATMO 125 (8 August 2018)

Unsuccessful opposition by Monster Energy to trademark registration of Real Beast filed on 1 April 2016 for various alcoholic beverages in class 33.

The opponent pursued grounds of opposition under s42(b), s44 and s60. It essentially relied on use and registration of various trade marks containing the word BEAST in tag lines UNLEASH THE BEAST!, UNLEASH THE NITRO BEAST!, UNLEASH THE ULTRA BEAST!, REHAB THE BEAST!, PUMP UP THE BEAST!, and UNLEASH THE CAFFEINE FREE BEAST! for its energy drinks and related promotional and sponsorship activities.

The delegate was not satisfied there would be a likelihood of confusion due to the overall differences between the applied for Real Beast mark and the opponent’s marks.

 

Spitfire Brands (Aust) Pty Ltd [2018] ATMO 126 (8 August 2018)

An application for trademark registration of TACTICAL filed on 17 March 2016 for various goods in classes 8, 9 and 11 was refused due to lack of distinctiveness.

The ground for rejection raised during examination was that the TACTICAL trade mark has limited inherent adaptation to distinguish the designated goods because the word tactical is commonly used in the marketplace to promote such goods, when sold (for instance) for the purpose of outdoor or adventure activities.

The evidence of use relied upon by the applicant was insufficient to overcome this objection.

The applicant owned an earlier registration for a composite mark containing the word TACTICAL covering relevant class 9 goods. However, the delegate commented this registration does not necessarily grant the applicant ownership or rights in the single word TACTICAL and it is not a sufficient reason for the acceptance of the applied for TACTICAL word mark.

 

Bodiguard Pty Ltd v Draeger Safety UK Ltd [2018] ATMO 127 (10 August 2018)

Successful opposition by Bodiguard to an application for removal of its trademark registration for BODIGUARD dating from 26 April 2013 for various goods in class 9 and services in class 42. The removal application was filed on 18 August 2018 based on lack of intention to use as at the 26 April 2013 filing date and no actual use up to 18 July 2018 under s92(4)(a).

The delegate considered Bodiguard’s evidence satisfied its onus of rebutting the allegation of lack of intention to use the BODIGUARD mark. Reference was made to case law stating that this onus is not high and can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith.

 

Andrew Thompson v Quantum Group Holdings Pty Ltd [2018] ATMO 128 (15 August 2018)

Successful opposition by Thompson to trademark registration of the QUANTUM GROUP Logo mark shown below filed on 10 July 2014 for various financial, insurance and real estate services in class 36.

Trademark Registration Quantum Group Logo

Neither party filed any evidence or submissions.

The opponent prevailed under s44 by relying on his prior registration for QUANTUM covering various taxation and accounting services in class 35.

In the absence of any evidence, the delegate considered the applicant’s services were similar to those covered by the opponent’s registered QUANTUM mark and that the applied for mark was substantially identical and deceptively similar to this registered mark.

 

Satnam Imports Pty Ltd v Simon Walter Sharpe [2018] ATMO 130 (17 August 2018)

Unsuccessful opposition by Satnam Imports to trademark registration of the DISCOUNT PARTY WAREHOUSE Logo mark shown below filed on 6 April 2016 for various wholesale, retail, advertising and marketing services in class 35

Trademark Registration Discount Party Warehouse Logo

The opponent pursued grounds under s58 ownership, s60 reputation an ds42(b) contrary to law, but failed to establish at least one of these grounds.

The opponent’s evidence was filed out of time, but the delegate allowed it. Although there would be some inconvenience to the applicant, the material was of probative value and it was in the public interest for it to be considered.

The applicant filed a document, but it was not in proper form and the applicant did not correct this.

The opponent asserted it had used the words ‘Discount Party Warehouse” in Australia since September 2002 and these words in logo form as shown below since November 2009 in relation to its party supply business.

Trademark Registration Discount Party Warehouse Stylised

The s58 ownership ground failed because the delegate did not consider the marks relied upon by the opponent were substantially identical with the applied for mark primarily because the words ‘discount party warehouse’ were descriptive and should largely be discounted when comparing the marks on a side by side basis.

The s60 ground failed because the delegate was not satisfied the opponent’s evidence demonstrated the requisite degree of reputation in the marks relied upon. The delegate also commented that “any likelihood of deception or confusion would more likely be due to factors other than the reputation of the Opponent’s marks, including the descriptive nature of the words used in the marks. That is, noting that the words “Discount Party Warehouse” are common to the parties’ marks, and notwithstanding the different stylisation of the words in the marks, on the face of it they are apt for normal description of the class 35 services”.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

 

Monster Energy Company v ODD Games Pty Ltd [2018] ATMO 131 (17 August 2018)

Unsuccessful opposition by Monster Energy to trademark registration of Monster Truck Destruction filed on 13 May 2016 for various goods in classes 16, 25 and 28 as well as various entertainment related services in class 41.

The opponent pursued grounds of opposition under s42(b), s44 and s60. It essentially relied on use and registration of various trade marks for MONSTER and MONSTER ENERGY for its energy drinks and related promotional and sponsorship activities.

The delegate was not satisfied there would be a likelihood of confusion due to the overall differences between the applied for Monster Truck Destruction mark and the opponent’s marks, particularly as “monster truck” has a distinct meaning in its own right generally referring to a pick up truck modified with a larger suspension and larger tyres, usually for recreational uses.

 

Monecor (London) Limited v TTT Moneycorp Limited [2018] ATMO 134 (24 August 2018)

Successful opposition by TTT Moneycorp to an application seeking removal of its trademark registration for MONEYCORP covering banking and foreign currency services in class 36 alleging non-use for these registered services during the 3 years period ending on 16 July 2016.

The delegate was satisfied the owner’s evidence was sufficient to show use of this mark during the relevant period and rebut the allegation of non-use.

 

Action North American, Inc. v Aobao International Pty Ltd [2018] ATMO 133 (28 August 2018)

Unsuccessful opposition by Aobao International to trademark registration of PW ONLY filed on 25 February 2016 for decals in class 16, clothing in class 25 and retailing services in class 35.

The opponent pursued grounds of opposition under s42(b) contrary to law, s58 ownership, s59 intention to use, s60 reputation and s62A bad faith, but failed to establish any one of these grounds.

The opponent asserted it had used PWONLY since October 2008 in connection with online sales of motorcycle spare parts.

The applicant commenced its business in 1997 with Australian sales of motorcycle spare parts from 2007.

The applicant was the first user of PW ONLY and had not evinced any intention to abandon this mark in Australia. Consequently, it was the true owner of this mark in Australia, so the s58 ground failed.

The s60 ground failed due to the poor quality of the opponent’s evidence of reputation.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

Given the finding under s58 ownership, the s59 lack of intention to use and s62A grounds necessarily failed.