Trade Mark News & Information

Trademark Registration – ATMO Decisions – February 2018

Irene Notaras v Barcelona Pty Limited [2018] ATMO 12 (1 February 2018)

Unsuccessful opposition by Notaras to an application for trademark registration of ATOMIC filed on 8 April 2015 for various bags and packaging in class 16, cups and containers in class 21, foods in classes 29 and 30, coffee grinding and roasting services in class 40 as well as food and beverage related services in class 43.

Notaras has, since May 1964, been involved with importing and selling in Australia ATOMIC coffee machines manufactured in Italy and has earlier registrations for the ATOMIC word and composite marks covering coffee makers in class 21.

Barcelona has, since 1 July 2005, operated a café in South Perth under the name Atomic Expresso. It also offers clothing and, since 2011 bags of coffee bearing the ATOMIC trade mark.

The s44 ground of opposition failed because the delegate did not consider any of Barcelona’s goods or services to be similar or closely related to any of the goods covered by the ATOMIC word mark registration owned by Notaras.

The s58 ownership ground failed because the delegate did not consider any of Barcelona’s goods or services to be the same kind of thing as the coffee maker/machine sold by Notaras under the ATOMIC trade mark.

The s60 reputation ground also failed. While the delegate accepted that Notaras had established a reputation in the ATOMIC trade mark for coffee machines, this was largely confined to the Eastern Seaboard and there was no evidence of any reputation in West Australia. Given this and the differences in the respective goods and services, the delegate was not satisfied there would be a likelihood of confusion.

Since the s60 ground failed, Notaras could not satisfy the higher evidentiary requirement  to show that use of the ATOMIC mark by Barcelona would be contrary to the Australian Consumer Law, so the s42(b) ground of opposition also failed.

Notaras also relied on s58A and s43, but those grounds were inappropriate.

 

Lucasfilm Ltd LLC v Stephen Muller [2018] ATMO 13 (2 February 2018)

Successful opposition by Lucasfilm to an application for trade mark registration of “theforceawakens” filed on 29 September 2015 for various beverages in class 32.

The opposition was upheld under the s43 ground namely that because of the connotation in THE FORCE AWAKENS, use of the applied for mark was likely to deceive or cause confusion.

THE FORCE AWAKENS was the title of the 7th film in the Star Wars series which was announced on 6 November 2014 with significant worldwide publicity.

The applicant was previously unsuccessful in his opposition to trademark registration of THE FORCE AWAKENS in classes 9 and 41 by Lucasfilm with effect from 16 February 2015. He also registered the domain name “theforceawakens.com.au” on 11 November 2014. Much of his evidence was unsupported.

Lucasfilm relied on various grounds of opposition, particularly s62A bad faith, but the delegate did not need to consider these other grounds because he upheld the s43 ground.

The delegate referred to the earlier Braveheart case and had no hesitation in finding that the applied for trade mark connotes the film of the same name and a substantial portion of the Australian public were aware of this film title as at 29 September 2015 such that use of the applied for mark for beverages would connote an association with the film and be likely to deceive or cause confusion.

 

Blackmarket.com.au Pty Ltd v VinoMofo Holdings Pty Ltd [2018] ATMO 14 (2 February 2018)

VinoMofo applied to remove trademark registrations for the word mark BLACKMARKET and a composite mark containing the words blackmarketwines.com.au covering various goods and services on the ground of non-use during the three year period ending on 3 February 2016.

The opponent, Blackmarket failed to rebut the allegations of non use or justify an exercise of discretion and so its oppositions were unsuccessful.

The opponent introduced evidence which included activity by a related entity in New Zealand but the delegate commented that “the conflating of the New Zealand and Australian entities in the evidence creates ambiguity as to whether the Opponent has authorized the use of the Trade Marks”.

The opponent also attempted to rely on additional material filed after the period for filing evidence had ended, but the delegate did not admit this material.

The delegate found that the opponent’s evidence did not show any use of the composite mark. There was some use through the New Zealand entity of the word mark, but that was confined to retailing of wine (and such services were not covered by the word mark registration). In any event, the delegate was not satisfied this retailing activity constituted trade mark use in Australia. The opponent merely relied upon the New Zealand website at www.blackmarket.co.nz being accessible to Australians, but there was no evidence of any specific intent for this website to be directed to or target Australian consumers.

There was no evidence which could support an objective commitment to use the registered trade marks in the Australian market.  There was, at best, some preliminary investigations into trading within Australia. The delegate did not exercise discretion and ordered the trade marks to be removed from the Register.

 

Miquadra SRL v Intrepid Sports Pty Ltd [2018] ATMO 15 (5 February 2018)

Intrepid Sports applied to remove a trademark registration for a composite mark containing the word INTREPID with a graphic design element covering professional and sports clothes in class 25 as well as design and developments services in class 42 relating to go karts and their components on the ground of non-use during the three year period ending on 11 March 2016.

The opponent, Miquandra failed to rebut the allegation of non use or justify an exercise of discretion and so its opposition was unsuccessful.

The opponent did not appear at the hearing or file any submissions. Its evidence was confined to a declaration made by a litigation assistant from its trade mark attorneys. The majority of this evidence was either undated or dated outside the relevant period. There was some use of composite marks comprising the word INTREPID but with different graphic elements to that of the registered mark. These other marks could not be relied upon to show use of the registered mark because the additions or alterations conveyed a substantially different overall impression.

The opponent did not file any evidence or advance any reasons to support a favourable exercise of discretion and the delegate ordered the trade mark to be removed from the Register.

 

The Revenue Gallery Pty Ltd v Michael Christopher Visone [2018] ATMO 16 (7 February 2018)

Successful opposition by Revenue Gallery to an application for trademark registration of  “Where fantasy meets reality” filed on 20 November 2015 for various entertainment services in class 41.

The opposition was upheld under the s59 ground. The opponent asserted the trademark application was filed for speculative purposes, particularly given the descriptive use of the phrase “where fantasy meets reality” in the adult entertainment industry by the opponent and others. As such the applicant could not have formed the requisite intention to use this phrase as a trade mark.

The delegate considered the opponent had done enough to establish a prima facie case as to a lack of intention and the onus shifted to the applicant to rebut this. The Applicant was clearly put on notice of this ground, but did not file any evidence or written submissions and so the s59 ground of opposition was satisfied.

 

Kayser-Roth Corporation v Rebecca Collinson-Smith [2018] ATMO 17 (13 February 2018)

Unsuccessful opposition by Kayser-Roth to an application for trademark registration of HUNTING HUE filed on 4 November 2015 for apparel in class 25 and computer design services in class 42.

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

The opponent owned a prior trademark registration for HUE covering a range of apparel in class 25, but the s44 ground failed because the delegate did not consider HUNTING HUE to be deceptively similar to HUE. The delegate commented that HUNTING occurs at the beginning of the mark and qualifies the word HUE to form a distinct corporate identity which is suggestive of searching for a distinguishing colour or the hunting pink worn by British fox-hunters. The delegate also considered the applicant’s class 42 services were not closely related to the opponent’s class 25 goods.

The opponent also relied on the s60 (reputation) and s59 (lack of intention to use) grounds of opposition, but the evidence did not support either ground.

 

Australian Drafting & Design Pty Ltd v Raj Gohil [2018] ATMO 18 (13 February 2018)

Successful opposition by Australian Drafting & Design to an application for trademark registration of the composite mark shown below filed on 25 November 2015 for a broad range of design, drawing and engineering services in class 42.

Trademark Registration Australian Design Drafting Services Logo

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

The applicant was a sub-contractor of the Opponent under an Agreement dated 17 September 2008 which was terminated by the Opponent by letter dated 23 November 2015. The trademark application was filed two days later.

The s58 ownership ground of opposition was upheld based on the opponent’s prior use of the trade mark shown below for the same kind of services.

Trademark Registration Australian Drafting Design Logo

The delegate concluded that “the ordering of the words, the selection of fonts, and the slight differences in graphical design within the trade marks do not subtract from the overall impression that the trade marks of the parties are, in essence, the same trade mark and that they are accordingly substantially identical.”

The s62A bad faith ground was also established. The delegate had no hesitation in concluding that “the Applicant was a sub-contractor for the Opponent for a period of some eight years and upon the adverse termination of that relationship has made application to register the Trade Mark which is substantially identical to the trade mark used by his former employer in relation to services which are also ‘the same kind of thing’ as those then offered by his former employer. I consider that this behaviour is likely to ‘fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.’”

 

Drogmi Buddhist Institute Incorporated v Philippe Gerard Droulers [2018] ATMO 19 (13 February 2018)

Successful opposition by Drogmi to an application for trademark registration of “Kamalashila Tibetan Buddhist Centre” filed on 14 December 2015 for meditation services in class 45.

The s58 ownership ground was established by virtue of the opponent’s use, as from 5 December 2015, of the identical trade mark at an Annual General Meeting in referring to the property at Tilba Tilba purchased as the principal place of business for the opponent’s meditation centre. The mere registration of a business name by the applicant could not be relied upon for the purpose of showing earlier use.

It is to be inferred from the decision that the delegate characterised the opponent’s use in connection with the name of the property as trade mark use.

 

Opti Licences Pty Ltd v M.D.Visage Pty Ltd [2018] ATMO 20 (15 February 2018)

Successful opposition by Opti Licences to an application for trademark registration of OPTI LEAN filed on 7 November 2014 for various dietary products in class 5.

The Opponent owns various prior trademark registrations for Opti- formative word marks including OPTISLIM 2000, OPTIFORCE, OPTISLIM VLCD, OptiSlim, OPTIFIBRE, Optiglow and OptiPharm covering relevant class 5 goods, but the delegate did not consider the s44 ground of opposition because he found in favour of the opponent under the s60 ground. Hence there was no discussion as to whether OPTI LEAN was deceptively similar to any of the opponent’s registered marks.

Under s60, the delegate was satisfied the opponent’s OPTISLIM trade mark had acquired a relevant Australian reputation as at 7 November 2014 in relation to various dietary preparations and this reputation would have existed amongst the intended market for the goods, namely those who attend pharmacies seeking preparations to aid in weight loss. On the likelihood of confusion aspect, the delegate noted that the words ‘slim’ and ‘lean’ have similar denotations. In balancing the relevant factors, the delegate was satisfied that a relevant person seeing the applied for OPTI LEAN trade mark for similar goods to that marketed under the OPTISLIM brand is likely to be at least caused to wonder if the respective trade marks are related or signal that the goods have the same trade source.

In reaching this conclusion, the delegate was not satisfied the opponent’s other Opti- formative marks had also acquired a reputation and commented that he was not suggesting the opponent has rights in the element “opti-“ per se. Rather, the likelihood of confusion arose from the reputation of OPTISLIM trade mark which was similar in look and meaning to OPTI LEAN.

 

Fairfax Digital Australia & New Zealand Pty Ltd and Fairfax Media Limited v REA Group Ltd. [2018] ATMO 21 (15 February 2018)

Unsuccessful opposition by Fairfax to an application for trademark registration of “realestate.com.au” filed on 18 April 2012 for advertising of real estate property services provided through a web portal in class 35 and real estate property services provided through a web portal in class 36.

The delegate made reference to various other Trade Marks Office decisions and a Federal Court proceeding involving favourable assessments of the applicant’s trade mark rights which the opponents sought to distinguish. This decision concerned distinctiveness of the realestate.com.au mark under s41 as it stood prior to the April 2013 amendments.

The delegate applied the High Court judgements in Clark Equipment and Cantarella by firstly considering the ordinary signification of realestate.com.au from the viewpoint of the persons who will avail themselves of the applicant’s services and concluded this trade mark is a domain name with a clear and immediate ordinary meaning. The delegate also considered that others would legitimately desire to use this trade mark or some mark nearly resembling it in connection with their own services. Hence, the delegate concluded the applied for mark is not to any extent inherently adapted to distinguish the applicant’s services and fell for consideration under s41(6) as it then stood.

The opponents argued that much of the evidence of use relied upon by the applicant is either not evidence of trade mark use, or is not evidence of use of the applied for mark by itself. While the delegate acknowledged that some of the evidence fell into these categories, it was of vanishing significance in the totality of the evidence submitted by the applicant. The slight diminution of eligible use did not disqualify the applied for trade mark from having acquired the requisite level of distinctiveness through long and extensive use. This trade mark had, through use, acquired a secondary meaning as denoting only the services of the applicant and was entitled to registration under s41(6).

 

Interactive Engineering Pty Ltd v Orchestral Developments Limited [2018] ATMO 22 (16 February 2018)

Successful opposition by Interactive Engineering to an application for trademark registration of ORION HEALTH filed on 13 June 2013 for various software, printed matter, telecommunications services and computer services in classes 9, 16, 38 and 42 mainly related to the healthcare field.

The opponent is a software company which, since 1983, has been marketing technology products based on active semantic structures under the ORION trade mark. It has prior trademark registrations for ORION including one covering computers, computer programs, computer related goods in class 9 and another covering printed matter in class 16. It also has a registration for ORIONVM covering various computer services in class 42.

The applicant has been operating in New Zealand since 1993 initially under the ORION brand and subsequently rebranding to ORION HEALLTH in 2006 when it first offered its goods and service in Australia.

The primary issue in the opposition was whether the applicant was entitled to registration of the ORION HEALLTH trade mark based on honest concurrent use. The use relied upon was by Orion Health Group Limited which was the parent company and Orion Health Pty Limited which was an Australian subsidiary of the parent. The applicant was merely an IP holding company. There was no evidence of a licence or other arrangement showing the applicant authorised or exercised control over use of the mark by the parent company or the Australian subsidiary as required under the Act. Hence, this use did not qualify as being authorised use and could not be relied upon by the applicant to establish honest concurrent use.

 

Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Limited [2018] ATMO 23 (19 February 2018)

Unsuccessful opposition by Ingeus to an application for trademark registration of QANTAS ASSURE filed on 23 November 2015 for a broad range of services including loyalty programs in class 35, insurance and financial services in class 36, transport services in class 39 and entertainment services in class 41.

The opponents and their predecessor in business (Assure Programs Pty Ltd) have been using various ASSURE trade marks (primarily ASSURE and ASSURE PROGRAMS) since 2002 in relation to employee assistance programs and have prior registrations for ASSURE PROGRAMS, ASSUREPLUS and ASSUREFIRST covering various services in class 35 and 44.

The s60 ground of opposition failed because the evidence did not support the opponents’ Australian reputation in the ASSURE or ASSURE PROGRAMS trade marks as at 23 November 2015. The s42(b) ground based on use of the QANTAS ASSURE trademark being misleading or deceptive and contrary to the Australian Consumer Law also necessarily failed due to the higher burden of proof.

Under the s44 ground, the opponent’s relied on the prior trademark registrations for ASSURE PROGRAMS but the delegate followed the Woolworths Metro case and considered the notoriety and familiarity of the QANTAS brand significantly mitigates the likelihood of deception or confusion. The delegate concluded the applied for QANTAS ASSURE trade mark was not deceptively similar to either of the prior registered marks.

 

Intact Projects Pty Ltd v Intact Consulting Pty Ltd [2018] ATMO 24 (20 February 2018)

Successful opposition by Intact Projects to an application for trademark registration  of the composite mark shown below filed on 16 September 2014 for various maintenance, repair and installation services in class 37

Trademark Registration Intact Group Logo

The applicant has provided building maintenance services since February 2008 under the applied for mark. A related company, Intact Construction Services Pty Ltd was incorporated on 6 June 1996 and has traded under the name Intact Group since the 1990s.

The opponent owns an earlier trademark registration dating from 2 September 2008 for the following mark covering similar class 37 services and has used this mark since 2008 for building project management services

Trademark registration Intact Projects Logo

The evidence relied upon by the opponent included instances of confusion between the respective marks.

The s44 ground of opposition was upheld. The delegate considered the word INTACT was the essential feature of each mark and the applied for mark was deceptively similar to the opponent’s registered mark.

The evidence filed by the applicant did not support ‘prior continuous use’ or ‘honest concurrent use’ of the applied for mark by the applicant. While there was use by the Intact Group, there was no evidence to connect this with the applicant.

 

Mt Shadwell Pty Ltd [2018] ATMO 25 (20 February 2018)

This case involved a successful objection by the applicant to the proposed revocation of registration of its application for trademark registration of CAREER NAVIGATOR filed on 27 October 2015 for various career counselling services in class 35 and life coaching services in class 45.

A s41 descriptiveness objection was raised during examination but the applicant was able to overcome this by filing written submissions and the trademark application was entered on the Register on 13 July 2016.

Some 9 months later, a third party wrote to the Registrar requesting revocation of registration on the basis that CAREER NAVIGATOR was not inherently adapted to distinguish the applicant’s services. This prompted a review of the case and the Registrar subsequently indicated an intention to revoke registration and acceptance of the application.

The delegate considered the trade mark should not have been accepted and registered without support evidence of use under s41(4). This was an error in judgement during the examination phase. However, it was not reasonable to revoke registration because the applicant had subsequently filed supporting evidence showing use of the trade mark since June 2014. It was also relevant that the timing of the third party’s request for revocation occurred around shortly after it received a cease and desist letter from the applicant.

 

Vito Mitolo & Son Pty Ltd v Mitolo Wines Aust Pty Ltd [2018] ATMO 26 (22 February 2018)

This case involved refusal of an application for an extension of time to file evidence in support of oppositions to trademark registration of MITOLO and MITOLO WINES.

The opponent was seeking an extension of one month in each case essentially on the basis that draft evidence had been prepared but the declarants were overseas and the opponent was also waiting for Counsel to review the drafts. The parties were also involved in Federal Court litigation and exploring settlement options.

Regulation 5.15 sets out very limited grounds for extensions to file evidence. The delegate was not satisfied the opponent had made reasonable efforts to meet its evidence deadline or acted promptly and diligently at all times in attempting to do so. There were no out of the ordinary or exceptional circumstances. The overseas travel of the declarants during the last 3 weeks of the period for filing evidence was reasonably foreseeable and there was no suggestion that they were not contactable during that travel.

This case reinforces the rigorous approach taken by the Registrar when reviewing extensions to file evidence in opposition proceedings.

 

Emanuela Elia v Oz Derma Pty Ltd [2018] ATMO 27 (26 February 2018)

Unsuccessful opposition by Elia to an application for trademark registration of OZDERMA filed on 4 December 2015 for various retail and advertising services in class 35.

The opponent has a prior trademark registration of Ozderm covering various product testing and other services in class 42. She also relied on use of this mark ( as well as a stylised variant of it) since September 2013 in connection with the testing of various personal care products for efficacy and safety. Although she asserted use for a broader range of market research and other class 35 services, this was not corroborated in her evidence.

The applicant operates medical general practice and cosmetic surgery businesses under the trade mark OZDERM, but there was no evidence as to any use of the applied for OZDERMA trade mark for the relevant class 35 services.

The s58 ownership ground failed because the delegate did not consider the services provided by the opponent to be the same or the same kind of thing as the class 35 services of the applicant.

The s44 ground failed because the applicant’s services were not regarded as the same or similar (of the same description) to the class 42 services covered by the opponent’s prior Ozderm trademark registration.

Under the s60 ground, the delegate considered the opponent’s trademarks had acquired only a very slight reputation for product testing services as at 4 December 2015. Although there was a high degree of similarity between these marks and the applicant’s applied for OZDERMA trade mark, the delegate was not satisfied there would be a likelihood of confusion, particularly due to the low degree of similarity of the respective services.

The opponent also relied on the s42(b) ground and asserted that use of the applied for mark would be contrary to the Australian Consumer Law but, given her failure to satisfy the s60 ground, it naturally followed that she was unable to establish the higher evidentiary burden required under s42(b).

Finally, the s62A bad faith ground also failed. The applicant filed its trademark application after receiving a cease and desist letter from the opponent. However, the mere filing of this application, without more, is not sufficient to constitute bad faith.

 

Campbell Soup Company [2018] ATMO 28 (26 February 2018)

An application for trademark registration of FRUITS AND ROOTS filed on 8 December 2016 for various non alcoholic beverages in class 32 was refused on the ground that it lacked sufficient inherent distinctiveness to qualify for registration without supporting evidence of use.

The delegate agreed with the Examiner that “the ordinary signification of FRUITS AND ROOTS, in Australia, to persons who will purchase, consume or trade in beverages is a direct reference to the nature of the Goods”, namely beverages containing the juice of various fruits and roots.

The delegate was also dismissive of a New Zealand trade mark registration for the identical mark.

 

LeisureLife (Aust) Pty Ltd v Glen Raven, Inc [2018] ATMO 29 (28 February 2018)

Successful opposition by LeisureLife to an application for removal of its trademark registration for SUNBRELLA covering various tents in classes 22 and 28 alleging non-use during the 3 year period ending on 14 November 2015.

The strongest evidence relied upon by the opponent was a purchase order dated 31 May 2015 created by the opponent and sent to a contract manufacturer in Korea for the supply of 1800 Sunbrella pop up shelters to be delivered to Target Australia in Melbourne. The delegate considered this constituted an offer for sale made in Australia which was relevant trade mark use and not just mere preparations for use. However, the purchase order did not constitute overwhelming convincing proof (which is needed where reliance is placed on a single item of use) and so the delegate went on to consider the other evidence, in particular price lists and specification sheets provided at meetings with prospective buyers for the opponent’s retail customers. Although there was no evidence corroborating these meetings actually occurred, the delegate was satisfied the evidence in its totality supported this. The delegate concluded “the Opponent’s evidence, as a whole, shows at the very least an objectively ascertainable commitment to producing vendible products which would carry the Trade Mark”.

 

Yardy Legal Pty Ltd v Fashion One (Oceania) Pty. Ltd. [2018] ATMO 30 (28 February 2018)

Unsuccessful opposition by Yardy Legal to an application for removal of its trademark registration for Trade Markers (stylised) as shown below covering various intellectual property related services in class 42 alleging non-use during the 3 year period ending on 26 October 2015.

Trademark Registration Trade Markers Logo

The delegate was critical of the evidence relied upon by the opponent and considered it fell short of showing use of the registered trade mark during the relevant period. The opponent held the domain name trademarkers.com.au but there was doubt as to active use of it during the relevant period. Mere registration of a domain name does not amount to use of it.

There was a single item of evidence showing use of the word “TradeMarkers” on the opponent’s website at yardy.com.au but the delegate considered use of this plain word could not be relied upon to support use of the trade mark in the highly stylised form as registered. Further, the webpage was downloaded after the relevant period.

The opponent did not make any submissions on discretion, but the delegate went on to consider this in light of the material on record and was not satisfied that it would be reasonable to exercise discretion not to remove the mark from the Register.