Trade Mark News & Information

Trademark Registration – ATMO Decisions – January 2018

Intercast Europe Srl v Next Holdings Limited [2018] ATMO 1 (9 January 2018)

Unsuccessful opposition by Intercast Europe to an application for trademark registration of the word mark NEXT filed on 13 October 2009 for various goods and services in classes 9, 14, 18, 25 and 35.

Under the s44 ground, the opponent relied on its prior trademark registration for NXT (Stylised) covering lenses for eyewear in class 9 as well as registrations owned by other parties for OPSM NEXT (Stylised) covering eyewear in class 9 and NEXT G (Stylised) covering various telecommunications related goods and services in classes 9, 38 and 42. The registrations for NXT(Stylised) and OPSM NEXT (Stylised) covered different goods and the delegate did not consider eyewear products to be closely related to general retail services and retail services relating to fashion accessories. Although the NEXT G (Stylised) registrations covered some similar goods, the delegate did not consider the applicant’s NEXT trade mark to be deceptively similar due to the prominence of the letter ‘G’ in the prior registered marks.

The s60 ground also failed because the evidence did not establish the requisite level of reputation in Australia of the opponent’s NXT trade marks.

The s62A bad faith ground of opposition also failed.

This matter was decided on the written record.

 

Bramco International Pty Ltd v Ampcontrol Pty Ltd [2018] ATMO 2 (10 January 2018)

Successful opposition by Bramco to an application for trademark registration of the word mark BRAMCO filed on 2 September 2015 for various electrical and electronic equipment in class 9 and related installation, maintenance and repair services in class 37.

The opponent prevailed under the s58 ownership ground based on prior use of an identical trade mark for goods and services that are the same kind of thing.

This matter was decided on the written record and the applicant did not file any evidence.

 

Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3 (11 January 2018)

The Education Group applied to remove a trademark registration for TEG covering various class 41 services on the ground of non-use during the three year period ending on 10 August 2015.

Although non-use was established, the delegate exercised discretion and allowed the TEG trade mark to remain on the Register. The highly publicised acquisition by Live Entertainment (owner of the Ticketek business) of the relevant businesses from the Nine Entertainment Group and rebranding, combined with use of the TEG trade mark after the relevant date were particularly relevant considerations. The delegate considered that removing the TEG trade mark would only generate the potential for confusion.

 

Fresh Venture Group Pty Ltd v Box Corporate Food Services Pty Ltd [2018] ATMO 4 (12 January 2018)

Successful opposition by Fresh Venture Group to an application for trademark registration of the word mark THE FRUIT BOX filed on 28 July 2014 for retailing and wholesaling of goods including fruit and vegetables in class 35.

The opponent prevailed under the s41 non-distinctiveness ground. The delegate considered the ordinary meaning by the general consumer of the expression THE FRUIT BOX is likely to be a “box of fruit”. It was also clear from the evidence that ‘the fruit box’ or ‘fruit box’ are commonly understood and used terms within the fruit and vegetable retail and wholesale markets within Australia. A consumer “would not be wrong in assuming that a retailer promoting its retail services under the Trade Mark was in the business of selling fruit”.

 

Australian Char Pty Ltd v The Kingsford Products Company LLC [2018] ATMO 5 (12 January 2018)

Kingsford applied to remove a trademark registration for MATCHLITE covering all goods in class 4 on the ground of non-use during the three year period ending on 17 April 2016.

Australian Char could not establish any relevant use of this mark. The delegate did not exercise discretion and ordered the trade mark to be removed from the Register.

There was some use of this trade mark up until 2006 when a local factory was closed. Australian Char sought to rely on an intention to relaunch the MATCHLITE barbeque briquettes in the summer of 2016/2017 and stated that trips were made to China and Hong Kong to discuss suitability of the product for the Australian market. However, there were no documents to support this placed into evidence.

 

Beaches and Bush Properties Pty Ltd v Bush to Beach Real Estate Pty Ltd [2018] ATMO 6 (16 January 2018)

Unsuccessful opposition by Beaches and Bush Properties to an application for trade mark registration of the composite mark shown below filed on 14 October 2015 for various real estate related services in class 36

Trademark Registration Bush to Beach Logo

The opponent relied on use and registration of its BEACHES AND BUSH trade mark.

The s44 ground failed because the delegate did not consider the applied for composite mark to be deceptively similar to the opponent’s registered BEACHES AND BUSH trade mark, particularly as the relevant services are high value and involve care by relevant purchasers.

The s60 ground also failed because the evidence relied upon by the opponent was insufficient to establish sufficient reputation and the delegate observed that evidence on the opponent’s social media sites should be taken with caution. Given this finding, the s42(b) contrary to law ground relying on the Australian Consumer Law also failed.

The s62A bad faith ground also failed. Although the opponents telephoned the applicant on 2 October 2015 (prior to the application being filed on 14 October 2015), the delegate was satisfied the applicant commenced using its trade mark in 2014 and at the time was not aware of the opponent. This was understandable given that the Applicant operated in North Queensland and opponent operated on the South Coast of New South Wales. The delegate considered “the decision of the Applicant to protect its rights in the Trade Mark by seeking registration does not amount to an action that was unscrupulous, underhanded or unconscientious in character; rather it appears to be an entirely appropriate response taken by a business that traded under an unregistered trade mark to protect its rights in the mark it had adopted and traded under”.

 

Vaishi Enterprises Pty Ltd v GSM Food and Spices Pty Ltd [2018] ATMO 7 (22 January 2018)

GSM applied to remove a trademark registration for the composite mark shown below covering milk products in class 29 and spices in class 30 on the ground of non-use during the three year period ending on 26 June 2012.

Trademark Registration Mehak Label

Vaishi’s evidence established use of this mark for yoghurt and the delegate exercised discretion in favour of leaving this mark on the Register for all milk products in class 29. This was despite the parties not having filed any submissions on discretion. However, the registration was removed for the class 30 goods.

 

Volvo Trademark Holding Aktiebolag v 3VOLV Pty Ltd as trustee for the 3VOLV Trust [2018] ATMO 8 (23 January 2018)

Unsuccessful opposition by Volvo to applications for trademark registration of 3VOLV (rendered as a plain word and in stylised script) filed on 5 August 2015 for various transportation related services in class 39.

The opponent relied on its prior use and registration of its VOLVO trade mark. The applicant did not file any evidence.

The s44 ground failed because the delegate did not consider the applied for 3VOLV trade marks to be deceptively similar to VOLVO.

Under the s60 ground, the delegate was satisfied the opponent had established a significant Australian reputation in its VOLVO mark for a wide variety of goods, particularly cars, trucks, buses, construction equipment, marine engines and parts and services related to those goods. However, the delegate was not satisfied the opponent had established a reputation in its VOLVO mark as a provider of transport services. The delegated noted that “this is not a case where the Word Mark is being sought to be registered for the same goods and services for which the VOLVO Mark has a reputation. While there is some connection or nexus between the Applicant’s Services and the goods including cars, trucks and buses for which the VOLVO Mark has a reputation in, the manner in which a consumer obtains transport services, hires or leases a vehicle from the Applicant is significantly different from the manner in which the consumer would normally purchase a vehicle and/or related services from the Volvo Group. I consider that the difference between the respective goods and services is a factor that would tend to reduce the likelihood of confusion.” Given this and the differences in the respective marks, the delegate was not satisfied there would be a likelihood of deception or confusion.

Given this finding under s60, the s42(b) contrary to law ground relying on the Australian Consumer Law also failed.

 

Tax and Economic Interest Grouping v Rosa Westland & Graham Westland [2018] ATMO 10 (29 January 2018)

Unsuccessful opposition by Tax and Economic Interest Grouping to an application for trademark registration of the composite mark shown below filed on 18 August 2014 for carious accountancy, business consultancy, bookkeeping and taxation related services in class 35

Trademark Registration Taxland Logo

The opponent relied on use and registration of its TAXAND trade marks

The s44 ground failed because the delegate did not consider the applied for  trade mark to be deceptively similar to any of the opponent’s prior TAXAND trademark registrations.

Under the s60 reputation ground, much of the evidence disclosed use of the TAXAND trade marks alongside branding of Corrs and was not satisfied use of the applied for trade mark would be likely to deceive or cause confusion.

Given this finding under s60, the s42(b) contrary to law ground relying on the Australian Consumer Law and passing off also failed.

The s41 ground of opposition also failed. There was no evidence that ‘tax land’ is a commonly used expression and the delegate was satisfied the applicant’s mark is inherently distinctive.

 

Planet Fitness Pty Ltd atf Planet Fitness Trust and Galactic Fitness Pty Ltd atf the Rosekelly Family Trust v PFIP LLC [2018] ATMO 11 (30 January 2018)

Successful opposition by Planet Fitness to applications for trademark registration of PLANET FITNESS (plain word and composite marks) filed on 11 October 2012 for various clothing in class 25.

The opponents prevailed under the s60 reputation ground based on use of various PLANET FITNESS composite marks since 1996 in connection with the operation of fitness centres. The delegate was satisfied the opponents’ logo trade marks in which the words ‘Planet Fitness’ appear had acquired a moderate reputation within New South Wales and noted that it is not necessary to establish this reputation extends to the whole of the Australian market. The delegate observed that “sports clothing, in particular tee-shirts are more often than not provided by gymnasia and fitness centres as an adjunct to their business whether it be by sales to their members or provision as a part of their membership. Such sports clothing prominently displays the trade mark of the gymnasium/fitness centre concerned”.