Trade Mark News & Information

Trademark Registration – ATMO Decisions – June 2018

Kerry Luxembourg S.a.r.l.v Nanny Annie Pty Ltd [2018] ATMO 92 (6 June 2018)

Unsuccessful opposition by Kerry to trademark registration of Vinci Coffee filed on 27 February 2015 for coffee and coffee products in class 30.

Shortly after the applicant filed its Notice of Intention to Defend the opposition, Kerry applied to amend its Statement of Grounds and Particulars to include s44 as a ground of opposition, specifically seeking to relying on its earlier registrations for versions of its Da Vinci Gourmet Logo in class 30. That amendment was refused, so the delegate considered only the s60 and s42(b) grounds of oppositions which were not established because the evidence relied upon failed to establish a sufficient Australian reputation derived from use of Kerry’s Da Vinci marks for syrups and flavourings. Kerry’s evidence failed to demonstrate awareness/appreciation of its Da Vinci marks among a significant or substantial number of Australian consumers of coffee and coffee-related products before the relevant priority date of the applied for trademark.

Kerry also relied on s61 based on Vinci being a town located in Tuscany, Italy, but did not file any evidence in support of this ground. The delegate was not satisfied Vinci constituted a geographical indication within the meaning of s61, so that ground also failed.


Michael Isgro v 12 Round Pty Ltd [2018] ATMO 89 (7 June 2018)

Successful opposition by Isgro to an application for partial removal of his trademark registration for 12rounds alleging lack of intention to use as at the 23 May 2012 priority date and no actual use since then up to 5 April 2016 for all of the class 41 services covered by this registration.

The delegate noted that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. Indeed, it is so low that it 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. Although, in this case, Mr Isgro did not make an express statement that it was his intention to use the 12rounds trademark, his subsequent actions supported such an intention. In particular, on 26 May 2013, setting up a crowdfunding appeal, engaging a cameraman and shooting footage for two episodes of his twelve part television series. Indeed, the delegate considered these actions constituted actual good faith use of the 12rounds trade mark


Escape Room Games Pty Ltd v Escape Room Geelong Pty Ltd [2018] ATMO 93 (12 June 2018)

Unsuccessful opposition by Escape Room Geelong to trade mark registration of Escape Room Geelong – The Mad Scientist in word and logo form filed on 22 and 24 February 2016 for various entertainment services in class 41.

The opponent relied solely on the s62A bad faith ground, but the delegate was not satisfied the trade mark applications were filed in bad faith. The evidence showed that, from at least 26 January 2016, the applicant was aware of use of the words ‘Escape Room Geelong’ on the opponent’s Facebook page. However, (1) given the descriptive nature of the words, (2) the fact that the applicant had been using the words ‘Escape Room Geelong’ in various iterations on media platforms from at least 6 October 2015 and that (3) the trade mark applications were filed upon receiving a demand letter from the opponent, the delegate was satisfied on balance that the  filing of the trade mark applications was motivated by a legitimate desire to protect the branding of the applicant’s business.


ATP Institute Pty Ltd [2018] ATMO 94 (15 June 2018)

The applicant was successful in overcoming a non-distinctiveness objection raised during examination of its application for trademark registration of MULTI FOOD filed on 15 August 2016 for various nutritional and dietary supplements in class 5.

The Examiner initially contended that MULTI FOOD indicates nutritional supplements and preparations composed of, or containing multiple foods. The Examiner’s Google research disclosed ‘means multi food based 120 tablets’ as well as many references to ‘multi food supplements/complex’ and ‘multi food fortification’.

The applicant then requested a hearing and filed supporting evidence of use.

The delegate essentially agreed with the Examiner and noted that once the mind is turned to the question of what the MULTI FOOD trade mark means to Australian purchasers, traders and consumers of nutritional or dietary supplements, there is little doubt that they would understand (without any prior knowledge) that such supplements would contain multiple food ingredients.

The delegate then went on to consider whether other traders would be likely, without improper motive, to desire to use this trade mark upon or in relation to the designated goods for the sake of this ordinary signification. After considering the Examiner’s online research and the applicant’s evidence on this, the delegate noted that there does appear to be not only use by the applicant but also some use by third parties of “multi food” both as a trade mark and in a descriptive sense. The delegate considered it was evident that other traders would desire to use these words for the sake of the signification mentioned earlier. In doing so, the delegate also commented that when reviewing online references, where the term “appears solely as use as a badge of origin, does not significantly inform the ‘other traders’ question and may additionally fail the ‘without any improper motive’ aspect of the consideration. To illustrate the point, an example such as ‘Multi-Food 1™ Tablets’ appears to be operating as a badge of origin (and therefore not an indication that other traders would desire to use the Trade Mark for the sake of its ordinary meaning), however a product description such as ‘Herbal Multi-Food Supplement’ uses the words comprising the Trade Mark for the sake of its ordinary signification”.

While the delegate was satisfied MULTI FOOD is, to some extent, inherently adapted to distinguish, it was also necessary to consider the applicant’s supporting evidence of use under s41(4). This disclosed the applicant selected the MULTI FOOD mark in early 2016 and commenced use of it in Australia in March 2017. Sales data for just over one year was placed into evidence together with examples of advertisements.

The delegate was satisfied that, in all the circumstances, MULTI FOOD does or will distinguish the applicant’s goods from those of other traders and accepted this trademark application.


Thomas Magnete GMBH v Gardner Denver Thomas, Inc. [2018] ATMO 95 (20 June 2018)

Successful opposition by Thomas Magnete to trademark registration of THOMAS filed on 26 September 2008 for various pumps, compressors and blowers in class 7.

The opposition was upheld under the s41 non-distinctiveness ground due to the surname significance of THOMAS and the applicant’s supporting evidence of use was insufficient to overcome this. The evidence disclosed use of various composite marks containing THOMAS, but the delegate was not satisfied there was sufficient use of THOMAS per se as a badge of origin.


Matchlow Pty Ltd v Godfrey Mantle [2018] ATMO 96 (22 June 2018)

Successful opposition by Matchlow to an application for partial removal of its trademark registration for THE GARDENS OF BABYLON alleging non-use during the three year period ending on 25 September 2016 for all of the class 43 services covered by this registration.

Matchlow’s evidence supported use (and hence common law ownership) of the trade mark. It had gone beyond investigating and planning whether to use the trade mark from at least in 2010 by purchasing a property for the proposed health resort, selecting a contractor, producing a concept plan, selecting manchester and creating a nursery. While this evidence supported an ongoing intention to use the trade mark, it did not support use during the relevant three year period. Nonetheless, the delegate exercised discretion in favour of Matchlow and allowed the trade mark to remain on the Register for the relevant class 43 services.


ABC Tissue Products Pty Limited v Solaris Paper Pty Ltd [2018] ATMO 98 (25 June 2018)

Successful opposition by ABC Tissue to an application for partial removal of its trademark registration for COTTONSOFT alleging non-use during the three year period ending on 1 March 2016 for all of the class 16 paper goods covered by this registration, excepting toilet tissue.

ABC Tissue conceded it had not used the trade mark for the relevant goods, but prevailed in achieving a favourable exercise of discretion based on use of this mark since 2003 in relation to toilet tissue. As a result, the COTTONSOFT trade mark was allowed to remain the Register without limitation.


Bio Living International Pty Ltd v Deborah Ann Cardona [2018] ATMO 100 (27 June 2018)

Successful opposition by Bio Living International to trademark registration of the Bio Living Organic Logo shown below filed on 10 June 2016 for a broad range of class 3 cleaning and personal care products.

Trademark Registration Bio Living Organic Logo

The opposition was upheld under the s60 ground based on the opponent’s Australian reputation derived from use of its BIO LIVING trade mark since at least 2008 in relation to wholesale distribution services of health and wellbeing products to a range of health and organic food stores, pharmacies, convenience stores and independent supermarkets.


Jannike Seiuli v Failepou Peni [2018] ATMO 101 (27 June 2018)

Successful opposition by Seiuli to trademark registration of PACIFIC RUNWAY FASHION Logo filed on 22 February 2016 for various fashion show related services in classes 35 and 41.

The applicant did not file any evidence and neither party filed submissions or requested a hearing, so the matter was decided on the written record.

The opposition was upheld under the s62A bad faith ground.

Seiuli has hosted an annual fashion show event called Pacifi Runway since 2012 and, in 2015, the applicant approached Seiuli to collaborate with this event and assisted with the 2015 event. As such, the applicant had a prior connection with Seiuli and her Pacific Runway event and was aware of Seiuli’s use of and rights in the Pacific Runway mark. While the applied for mark was not identical to Seiuli’s Pacific Runway mark, the respective marks were sufficiently close and share the ‘Pacific Runway’ element. The delegate was satisfied that the applicant ought to have been aware that they should not have applied to register the mark and that the applicant’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.


Moon Lake Investments PL v TasFoods Ltd [2018] ATMO 104 (28 June 2018)

Unsuccessful oppositions by Moonlake to trademark registration of  Van Diemen’s Land Milk and Van Dieman’s Land Dairy filed on 24 November 2015 for dairy products in classes 29 and 30.

The opponent asserted prior use and ownership of the unregistered trade mark VAN DIEMEN’S LAND for dairy and milk products, on the basis of use by its predecessor company, VDLC. However, this was characterised as business use as part of the company name, Van Dieman’s Land Company and not use as a trade mark. Consequently, the s58 ownership and s60 reputation grounds of opposition failed because they both require trade mark use. The evidence also did not support the higher onus under the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law.

Under the s62A bad faith ground, the opponent asserted the applicant filed the trade mark applications knowing the trade marks were owned by the opponent and where assets within the terms of an earlier Sale Agreement which had passed to the opponent. However, these assertions could not be sustained under the evidence and history between the relevant parties. The applicant’s conduct could not be characterised as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons, or of an unscrupulous, underhand or unconscientious character.