Trade Mark News & Information

Trademark Registration-ATMO Decisions-December 2018

Paypal, Inc v Finpal Pty Ltd [2018] ATMO 196 (10 December 2018)

Successful oppositions by Paypal to trademark registration of FinPal Logo and FINPAL filed on 14 September 2016 and 23 February 2017 for financial related goods and services in classes 9, 36 and 42.

The opponent prevailed under the s60 ground based on the Australian reputation of its PAYPAL trade mark.

The delegate’s reasons are not currently available.

 

Great Ocean Road Cycling Incorporated v Beaumont Management Services Pty Ltd [2018] ATMO 197 (11 December 2018)

Successful opposition by GORC to trademark registration of GREAT OCEAN ROAD CYCLING Logo as shown below filed on 17 October 2016 for sporting related services in class 41.

Trademark Registration Great Ocean Road Cycling Logo

Essentially, this matter involved a dispute between parties which were originally involved in conducting the Great Ocean Road Cycling event in Victoria. Different versions of the trade mark were created over the years of organising and conducting this event. The delegate upheld the opposition on the s58 ground finding that the opponent had superior ownership rights by virtue of first use of a substantially identical trade mark by its predecessor (an unincorporated association) who organised the 2014 event.

 

International Space University” – (ISU) (Association de droit local) [2018] ATMO 198 (18 December 2018)

Application for trademark registration of ISU INTERNATIONAL SPACE UNIVERSITY filed on 5 December 2016 in classes 16, 41 and 42.

This application was refused under s41 and the applicant was unable to overcome the objection that the applied for mark is likely to be read by reference to the words International Space University and had an ordinary meaning indicating a university, operating internationally, providing specialised education in space-related areas and these words are likely to be legitimately required by others.

Although the applicant had been operating a university under this name since 1987, it had a very limited Australian presence and reputation. Consequently, such use was insufficient to overcome the s41 objection.

 

Augusta National Inc v Dennis Roy [2018] ATMO 199 (20 December 2018)

Successful opposition by Augusta National to trademark registration of the composite mark shown below filed on 23 December 2015 for information services in class 41

Trademark Registration The Masters Pennant Logo

The opponent relied on grounds of opposition based on ss 42(b) and 60. The delegate was satisfied that the Opponent had established a significant reputation in Australia in the name “The Masters”, used in respect of its annual, prestigious golf tournament in the USA. Significantly, the delegate went on to find that use of the applied for mark would be contrary to law under the s42(b) ground of opposition, namely that it would be likely to mislead or deceive under the Australian Consumer Law in that the mark would convey the misrepresentation to a person accessing the applicant’s services that they were sponsored by, or being delivered by or under the auspices of, the opponent. This was particularly attributable to the placement of the golfer device between the words THE MASTERS and PENNANT which gives an impression of two separate concepts, namely (1) a pennant competition sponsored by or run by The Masters and (2) the green background with its accompanying suggestion of the famous green jacket presented to the winner of The Masters golf tournament.

 

Rolex S.A. v Spooks GmbH [2018] ATMO 200 (20 December 2018)

Unsuccessful opposition by Rolex to trademark registration of the composite SPOOKS & design mark shown below filed on 27 August 2015 for goods for horses in class 18 and various apparel in class 25.

Trademark registration Spooks Logo

The published reasons are currently unavailable and presumably the opposition was based on the opponent’s familiar Crown Device mark shown below:

Trademark Registration Rolex Crown Logo

However, the delegate was not satisfied the opponent had established any one of the grounds of opposition under ss 42(b), 44 or 60.