Trade Mark News & Information

Trademark Registration – ATMO Decisions – May 2018

TWM Imports Pty Ltd v Hangzhou Great Star Industrial Co., Ltd [2018] ATMO 61 (1 May 2018)

Successful opposition by TWM to trade mark registration of MILLERS FALLS filed on 2 November 2015 for various goods in classes 6, 8, 9 and 20.

The s60 reputation ground of opposition was upheld with the opponent relying on reputation acquired through Australian use of the MILLERS FALLS trade mark since 1993 in connection with a range of hand and power tools. The delegate was satisfied this mark had acquired some reputation in the tools, machinery and hardware goods markets and that there would be a likelihood of confusion.

 

Imperial S.p.A. v Alliance Apparel Group, Inc. [2018] ATMO 62 (2 May 2018)

Unsuccessful opposition by Imperial to trademark registration of PRIVACY PLEASE filed on 16 September 2015 for various clothing in class 25.

The opponent relied on its prior registration and use of the trademark PLEASE (Stylised) for clothing. The applicant had been using its PRIVACY PLEASE mark in Australia since 22 July 2015.

The s44 ground failed because the delegate did not consider the PRIVACY PLEASE trade mark to be deceptively similar to the opponent’s registered PLEASE (Stylised) mark.

The s58 ownership ground failed because the delegate did not consider the PRIVACY PLEASE trade mark to be substantially identical to the opponent’s PLEASE (Stylised) mark which had been used from an earlier date.

The s60 reputation ground also failed because the evidence relied upon by the opponent was insufficient to establish the requisite level of reputation, particularly given the broad target market for clothing.

The opponent also relied on the s42(b) contrary to law and s62A bad faith grounds, but they also failed.

 

Neil Pryde Limited v Callaway Golf Company [2018] ATMO 63 (2 May 2018)

Unsuccessful opposition by Neil Pryde to an application for partial removal of its trademark registration for RS:X (Stylised) alleging non-use for the three years period ending on 10 November 2015 for “games and playthings; gymnastics and sporting articles not included in other classes; decorations for Christmas trees” in class 28. The registered mark also covered windsurfing goods in class 28 and class 25 goods.

THE RS:X (Stylised) trade mark registration was preventing registration of the removal applicant’s RSX mark for golf clubs.

There was no evidence of use of the RS:X (Stylised) mark for anything other than windsurfing equipment and the delegate was not willing to exercise discretion and allow the mark to remain on the Register in class 28 for any other goods.

 

Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company [2018] ATMO 64 (4 May 2018)

Unsuccessful opposition by Consorzio Per La Tutela Del Formaggio Asiago to trademark registration of SARTORI ASIAGO filed on 13 March 2015 for Asiago-style cheese in class 29.

Asiago is a geographical indication for a style of cheese from a region in Italy known as the Asiago Plateau.

The opponent is an association of cheese producers in Italy responsible for certifying the quality of Asiago cheese and licensing use of the Asiago name. It owns a prior standard trade mark registration for ASIAGO & device as well as a certification trade mark registration for A & device as shown below

Trademark-Registration-Asiago-Logo     Trademark Registration A logo

It also has a later filed certification trademark application for the ASIAGO word mark which has been accepted.

The applicant is a cheese maker in Wisconsin, USA which has been selling cheese under the name Asiago from 1950, but there was no evidence of any Australian use.

The s60 reputation ground of opposition failed because the delegate was not satisfied as to any relevant reputation in the opponent’s marks in Australia, rather the term Asiago is likely to be considered by consumers as simply a descriptive term for a particular type of cheese. There was no cogent evidence of the opponent or any of its members having educated the Australian public to expect that cheese bearing the name Asiago come only from the Asiago Plateau in Italy.

Given this finding, the s42(b) contrary to law ground also failed.

The s43 connotation ground failed because there could not be a likelihood of deception or confusion arising from the presence of the word ASIAGO in the applicant’s mark when the goods are Asiago -style cheese.

The s61 ground failed because the applicant could rely on use of ASIAGO outside of Australia from the 1950s and well before 1 January 1996.

 

Milir Enterprises Pty Ltd as trustee for The Lynch Family Trust v Scarab Water (Pty) Ltd & Stephen Nicol [2018] ATMO 65 (4 May 2018)

Successful opposition by Milir to an application for removal of its trademark registration for the composite mark shown below alleging lack of intention to use the trade mark at the time of filing the trade mark application on 14 May 2014 and non-use during the period ending on 12 November 2016 for various waste treatment related services in classes 40 and 42.

Trademark registration Scarab Logo

Both parties filed evidence but did not file submissions and the decision was given on the written record.

The primary issue was whether the use relied upon by Milir, namely authorised use by Scarab Waster Water Australia Pty Ltd, was in good faith.  For the good faith requirement to be satisfied, the relevant use needs to be real, genuine use for commercial purposes, and not just token use in the sense of being fictitious or colourable use merely for the purpose of defeating a non-use removal application. In the present case, Milir had demonstrated, at the very least, an intention to use the registered mark. There was no evidence filed by the removal applicant which established Milir lacked an intention to use the registered mark in good faith at the time of filing the trade mark application.

 

Red Energy Pty Limited [2018] ATMO 66 (9 May 2018)

A divisional application for trademark registration of EVENPAY with a priority date of 9 May 2013 for a broad range of goods and services in classes 9, 16, 35 – 42 was refused.

During examination an objection was taken that the ordinary meaning of EVENPAY is payment of bills in equal amounts and other traders are using this term to refer to bill payments of an equal amount spread over a period of time.

The delegate upheld this objection and reinforced that lack of inherent adaptation to distinguish is not confined to an ordinary meaning of a term being descriptive. Here the ordinary meaning contended by the examiner was supported by evidence of four other Australian utilities suppliers. The evidence of use relied upon by the applicant was largely limited to Victoria and did not show EVENPAY had not come to signify only the services of the applicant and displaced its ordinary meaning of a particular kind of bill payment service.

The delegate followed Apple Inc v Registrar of Trade Marks [2014] FCA 1304 and rejected the trade mark application in its entirety, rather than dissecting the specification into precisely what goods and services may or may not be objectionable.

 

Huawei Technologies Co Ltd v Taiwan Wachine Co Ltd [2018] ATMO 67 (10 May 2018)

Unsuccessful opposition by Huawei to an application for trademark registration of the WAWEI composite mark shown below filed on 9 November 2015 for various goods in class 30

Trademark Registration WAWEI Logo

The opponent relied on use and registration of its various HUAWEL trade marks, particularly for telecommunications equipment, computer equipment and mobile phones and related services.

The s44 ground failed because the applicant’s goods were not similar or closely related to any of the goods or services covered by the opponent’s HUAWEI trademark registrations.

The s58 ownership ground also failed because the applicant’s goods were not the same kind of thing as those for which the opponent had previously used its HUAWEI mark.

The delegate was satisfied the opponent’s HUAWEI trade marks had acquired a substantial Australian reputation, but the s60 ground failed because the delegate was not satisfied as to the likelihood of confusion, particularly given the very different nature and market for the applicant’s foodstuffs.

 

Austin Austen Pty Ltd v Brooke Testoni [2018] ATMO 68 (10 May 2018)

Unsuccessful opposition by Austin to an application for trademark registration of RYLAN filed on 30 March 2016 for various goods in classes 18 and 25 as well as retailing services in class 35.

Both parties filed evidence but did not file submissions and the decision was given on the written record.

The opponent relied on its prior trademark registration for RLYIN covering the same goods in class 25 and online retailing services in class 35.

However, the delegate did not consider RYLAN to be substantially identical with or deceptively similar to RLYIN, so the s44 ground of opposition failed.

On the deceptive similarity issue, the delegate observed that the registered RLYIN mark “is likely to be pronounced ‘Are Lyin’ and is likely to be remembered and recalled on that basis. It is of somewhat awkward construction beginning, as it does, with two consonants not usually found at the beginning of words in the English language. It may suggest itself as being of the same genus of construction as RUOK (are you okay) or BCNU (be seeing you).” Conversely, the applied for RYLAN mark “is readily pronounceable and suggests itself as a forename or surname and, in its turn, is likely to be remembered and recalled on that basis.” Further “there is little phonetic similarity between the trade marks”. The delegate did consider the nature of the relevant goods and services and commented that the selection of these goods (and the retail service pertaining thereto) is likely to be with some care and consideration. However, on balance, the delegate was not satisfied that there is a real likelihood of deception of confusion between the respective marks.

It is unclear whether the evidence was directed to the likely pronunciation of RLYIN. Indeed, the opponent’s website states this word is pronounced ‘R-Lynn’. The delegate did not really comment on the importance of visual processes involved in the selection of apparel and the use of online retail sites. This decision is difficult to reconcile with other cases in this field.

 

Australian Rail Track Corporation Limited [2018] ATMO 69 (11 May 2018)

The applicant was successful in overcoming an objection to its applications for trademark registration of INLAND RAIL (plain word and stylised) filed on 20 September 2016 for goods and services in classes 9, 36, 37 and 39.

During examination, there were objections based on the ordinary meaning of the words INLAND RAIL being goods and services relating to a railway situated in the interior part of Australia.

The delegate considered INLAND RAIL has some inherent adaptation to distinguish and the evidence relied upon by the applicant was sufficient to satisfy that these marks have the capacity to distinguish the relevant goods and services.

 

Jalco Australia Pty Limited v Autotech Group Australia Pty Ltd [2018] ATMO 70 (14 May 2018)

Unsuccessful opposition by Jalco to an application for trademark registration of the composite mark shown below filed on 3 June 2010 for various car cleaning products in class 3

Trademark-Registration-Greencar-Logo

No evidence was filed and the decision was given on the written record.

There were some 12 grounds of opposition, but they were largely non-specific and unsupported by evidence. The delegate only considered the grounds under section 44 and 60.

Under s60, reference was made to the opponent’s GREENCARE trade mark in the Statement of Grounds and Particulars, but there was no evidence to establish any requisite Australian reputation, so that ground necessarily failed.

Under the s44 ground, reference was made to the opponent’s earlier trademark registration for GREENCARE covering various cleaning and laundry products in the Statement of Grounds and Particulars. Since there were sufficient particulars, this ground of opposition was clearly in issue without the need for supporting evidence. However, the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to GREENCARE.

 

Beer Cartel Pty Ltd v Pirate Cartel Distribution Pty Ltd [2018] ATMO 71 (15 May 2018)

Unsuccessful opposition by Beer Cartel to an application for trademark registration of PIRATE CARTEL filed on 21 July 2016 for distribution and wholesaling services in class 35.

No evidence was filed and the decision was given on the written record.

Only the grounds under sections 43 and 44 were particularised in the Statement of Grounds and Particulars. The remaining grounds were unsupported by evidence and could not be sustained.

Under s44, the opponent relied on its prior trademark registration for BEER CARTEL covering relevant class 35 wholesaling services. However, the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to BEER CARTEL. The delegate commentated that although the respective marks share the word ‘cartel’, the replacement of the word ‘beer’ with the word ‘pirate’ results in a visual, aural and conceptual difference between PIRATE CARTEL and BEER CARTEL.

The s43 ground also failed. The opponent was seeking to rely on confusion arising from the reputation of its BEER CARTEL mark and that is not a proper consideration for s43 where the requisite confusion or deception must arise from a connotation within the applied for mark itself rather than as a result of the reputation the opponent may be able to demonstrate in its own trade mark.

 

Murrays Craft Brewing Co Pty Ltd v Artemis IP Limited [2018] ATMO 72 (15 May 2018)

Unsuccessful opposition by Murrays to an application for trademark registration of SHACK filed on 6 June 2015 for various non-alcoholic beverages in class 32.

No evidence was filed and the decision was given on the written record.

The opponent nominated grounds under sections 58, 59, 60 and 62A in its Statement of Grounds and Particulars, but they were not supported by any evidence and necessarily failed because the opponent had not discharged its onus of at least making out a prima facie case.

 

Peter Bell v The Melbourne Cricket Ground Trust [2018] ATMO 73 (16 May 2018)

Unsuccessful opposition by Bell to an application for removal of his trademark registration for ‘the G’ alleging non-use during the 3 year period ending on 18 October 2016 for any of the registered class 25 goods, namely men’s and women’s clothing.

The opponent’s evidence was insufficient o rebut the allegation of non-use. There was a reference to a t-shirt bearing the graphics shown below.

Trademark Registration The G Melbourne Logo

However, this did not constitute use of the registered mark with additions or alterations not substantially affecting its identity.

There was no basis for exercising discretion in favour of the opponent, so the delegate directed his trademark registration to be removed from the Register.

 

Condor Cycles Limited v Reid Cycles Pty Ltd [2018] ATMO 74 (16 May 2018)

Successful opposition by Condor to an application for trademark registration of CONDOR filed on 2 November 2015 for bicycles in class 12.

The opponent had a prior trademark registration for CONDOR dating from 22 September 2015 covering bicycles, but the applicant was able to overcome this by relying on s44(4) prior continuous use from January 2009. However, the opponent had sold bicycles bearing the CONDOR trade mark in Australia in 1974 and 2005-2006. Consequently, it had a superior claim to ownership of the CONDOR trade mark for bicycles and prevailed under the s58 ground.

 

SAPH Vision Quest Association Inc v Jacqueline Margaret Hendy [2018] ATMO 76 (17 May 2018)

Successful opposition by SAPH to an application for trademark registration of NEW BEGINNINGS filed on 29 April 2014 for various entertainment related services in class 41.

The opponent filed evidence, but neither party filed submissions and the decision was given on the written record.

The opponent’s prior registration for the composite trade mark shown below was raised as an examination objection

Trademark Registration New Beginnings Logo

The applicant overcome this objection by relying on the prior continuous use provision under s44(4) and filed a declaration as to use of the applied for mark since early 2013 in relation to a series of networking events.

Since the applicant’s declaration filed during examination of her trademark application was not filed as evidence in answer to the opposition, it could only be taken into account under Regulation 21.19 which was allowed here, particularly as it was apparent the opponent had previously gained access to this declaration under the Freedom of Information Act.

Nonetheless, the opponent prevailed under s58A based on earlier use of its registered mark since April 2008 for similar services.

 

Kaeser Kompressoren SE v Atlas Copco Drills AB [2018] ATMO 77 (17 May 2018)

Unsuccessful opposition by Kaeser to an application for trademark registration of EASER filed on 21 January 2015 for various goods and services relating to mobile drilling rigs in classes 7, 12 and 37.

The opponent relied on use and registration of its KAESER trade marks in connection with compressor related goods and services.

The grounds of opposition under s42(b) (contrary to law), s43 (connotation) and s62A (bad faith) were not substantiated and dismissed.

The s44 ground of opposition failed based on the differences in the respective goods or trade marks. The opponent’s evidence was deficient in not providing support for similarity of the relevant goods. The delegate did not consider EASER to be deceptively similar to KAESER.

The s58 ownership ground failed because the delegate did not consider EASER to be substantially identical to KAESER.

Under the s60 reputation ground, the delegate was satisfied the opponent’s KAESER trade marks had acquired a significant reputation in Australia for air compressors and related services across several industries. However, there was a lack of evidence going to the likelihood of confusion, particularly evidence as to the opponent’s compressors being directed to drilling applications. Also, given the differences in the respective marks, confusion was unlikely.

 

Mark Robinson and Brenda Robinson v Australian International Traders Pty Limited [2018] ATMO 75 (18 May 2018)

Unsuccessful opposition by Robinsons to an application for removal of their DYNAMITE trademark registration alleging non-use for the 3 years period ending on 17 September 2016 for all of the class 30 goods covered by the registration.

The opponents’ evidence contained general statements asserting use of the DYNAMITE mark, but they were unsupported by corroborating documents. There were invoices dated 13 February 2016 and 10 June 2016 issued by Nature’s Blend Pty Ltd as well as undated photographs of packaging.

Where reliance is placed on minimal alleged use, namely two invoices, there needs to be overwhelming convincing proof and the delegate was not satisfied this was the case here. The removal applicant challenged the cogency of the invoices. In particular, they appear to have been generated from internal records and not copies of actual invoices, no GST was indicated and the unit price of the same product varied considerably on each invoice. There was no corroborating evidence that the goods were actually provided under either invoice. Archive searches of the Nature’s Blend website did not show the products referred to in the invoices appearing on this website until November 2016. The opponents failed to answer these doubts as to the cogency of the two invoices being relied upon and the delegate was not satisfied they had used the DYNAMITE mark during the relevant period.

Given this finding, it was not necessary for the delegate to decide whether, if there was relevant use by Nature’s Blend, it was authorised by the opponents.

The opponents did not make any submissions on discretion and the delegate was not prepared to exercise discretion in their favour.

 

APL Co Ltd [2018] ATMO 78 (21 May 2018)

APL was successful in overcoming a distinctiveness objection relating to its application for trademark registration of AIRPORTLINKM7 filed on 25 August 2015 for a range of goods and services in classes 9, 36, 37, 39 and 42.

The examiner had raised an objection that the ordinary meaning of AIRPORTLINKM7 indicates the applicant provided road, transport and toll goods and services to link an airport to the M7. The applicant provided evidence of use for 5 years, but the examiner maintained the objection and considered it showed AIRPORTLINKM7 being used as the name of a toll road.

Actually, the name of the relevant road is M7 and it is a 6.7km twin tunnel tollway with numerous entry and exit points. As such it is not simply a link to the airport on the M7 motorway.

The delegate agreed with the applicant that, like Q1 for a building, the term AIRPORTLINKM7 had not become part of the common heritage and its use as the name of a piece of infrastructure does not alter its inherent adaptation to distinguish the applicant’s goods and services. The delegate was satisfied this term did not have any ordinary meaning in connection with the relevant tolling goods or services and it was not necessary to consider the likelihood of other traders legitimately requiring to use this term for the sake of its ordinary signification.

 

Australian Grape and Wine Authority v Yi Li [2018] ATMO 79 (21 May 2018)

Successful opposition by the Authority to an application for trademark registration of MEDAL filed on 3 February 2016 for various wines in class 33.

The opponent filed evidence, but neither party filed submissions or participated in the hearing.

The opponent prevailed under the s41 ground and satisfied the delegate that the word MEDAL is not sufficiently adapted to distinguish the applicant relevant class 33 goods from those of others.

The delegate noted the direction from the Cantarella case that the ordinary meaning of a word is to be considered from the perspective of any person in Australia concerned with the goods including persons who will purchase, consume or trade in these goods.

The opponent contended the word ‘medal’ is widely used in the Australian wine industry to refer to an award or accolade given to a wine and denotes the quality and character of a wine by reference to that wine having achieved a relevant accolade or award.

The delegate was satisfied the opponent’s evidence demonstrated the target market for wines would understand word ‘medal’ to be a direct reference to the quality of the wine it refers to. However, the delegate did not consider this word is not to any extent inherently adapted to distinguish and it fell within s41(4). Nonetheless, since the applicant did not rely on any evidence of use, intended use or other circumstances, the delegate rejected the trade mark application.

 

Medvisit LLC v Medvisit Pty Ltd [2018] ATMO 80 (25 May 2018)

Successful opposition by Medvisit LLC to applications for trademark registration of MDVISIT DOCTOR SERVICE word and logo marks filed on 7 and 8 November 2015 for various medical related services in class 44.

Both parties filed evidence, but neither party filed submissions or participated in the hearing.

The opponent prevailed under the s44 ground, relying on its prior registration for the composite mark shown below which covered navigation goods in class 9 as well as navigation related services in class 38 and computer software design services in class 42.

Trademark Registration MedVisit Logo

Essentially, the opponent provides a service enabling patients to request an in-home medical consultation from a local doctor via an app or telephone. It commenced its Australian business in November 2014.

The applicant also provides an equivalent service enabling patients to request home visits by a doctor via telephone and electronic bookings via a website or app. It commenced Australian business in April 2015.

The delegate considered the applied for marks were deceptively similar to the opponent’s registered mark. While the applicant’s medical services might not, on a prima facie assessment, be considered similar or closely related to those goods and services covered by the opponent’s registration, the evidence demonstrated that both parties operate the same kind of business and highlights how use in a normal and fair manner by each party within the scope of their respective specifications would be likely to result in deception or confusion.

The applicant was unable to rely on honest concurrent use, other circumstances or prior continuous use under s44(3) or s44(4).

 

Sumol Compal S A v Sumo IP Holdings Pty Ltd [2018] ATMO 81 (25 May 2018)

Unsuccessful opposition by Sunol to an application for trademark registration of SUMO filed on 6 January 2015 for various foodstuffs, beverages and related services in classes 29, 30, 32, 35 and 43.

The opponent produces fruit drinks under various SUMOL trade mark and has sold various beverage products in Australia since 2000.

The applicant commenced business in Australia in 2001 and operates the successful SUMO SALAD franchised stores selling healthy, wholesome fast foods.

Under s44, the opponent relied on its prior trademark registration for SUMOL PORTUGAL (Stylised) covering coolers and fruit juices in class 32. However, did not consider SUMO to be substantially identical with or deceptively similar to this registered mark.

The s60 reputation ground failed because the opponent’s evidence did not show it had acquired an Australian reputation in its SUMOL marks. The Australian sales and promotional activities were too meagre to infer a reputation.

Given this finding on reputation, the s42(b) contrary to law ground, based on contravention of the Australian Consumer Law for misleading or deceptive conduct, also failed.

 

Susanne Lang Fragrance Inc. v The Lip Lab Pty Ltd [2018] ATMO 82 (30 May 2018)

Unsuccessful opposition by Susanne Lang Fragrance to applications for trademark registration of THE LIP LAB word and logo filed on 18 October 2015 for cosmetic related services in classes 40 and 44.

The opponent sells a range of cosmetic products under its BITE BEAUTY brands and provides an in-store service of manufacturing customisable lipstick in its ‘Lip Lab’ from retail locations in the USA and Canada.

The applicant sells cosmetic products and provides services that allow customers to produce their own lipstick products.

The opponent’s use of LIP LAB was confined to the North American market and it was unable to establish any Australian reputation in this mark. Consequently, it could not establish the applicant’s use of the applied for marks would be contrary to the Australian Consumer Law and the s42(b) ground of opposition failed.

The s43 ground failed because the opponent could not establish any connotation inherent in THE LIP LAB such that use of these marks would be likely to deceive or cause confusion.

The s62A bad faith ground also could not be established. There was evidence as to the applicant’s independent creation of THE LIP LAB mark and it sourced its products and processes from a different business in the USA. The mere ‘liking’ of the opponent’s Facebook page could not be used to draw any adverse inference. Indeed, there was no evidence this page even referred to LIP LAB.

 

2eros Pty Ltd v l Beling [2018] ATMO 83 (30 May 2018)

Unsuccessful opposition by Beling to an application for removal of his trademark registration for SUPA logo alleging non-use during the 3 years period ending on 23 May 2016 for all of the class 25 goods covered by this registration.

The opponent filed evidence. There was no evidence by the removal applicant and neither party filed submissions or participated in the hearing.

The opponent’s evidence was directed to his intentions to use the mark and preparations for such use. However, the delegate did not consider these preparations were at an advanced stage. There needs to be an intention to use accompanied by objective proofs of that intention in the form of action to commit goods bearing the mark to actual trade in Australia (Woolly Bull case) and the delegate was not satisfied this was the case here.

The opponent put forward a number of matters which he contended were an obstacle to use of the registered mark, but the delegate was not satisfied that any of them were capable of disrupting trade in the area of commercial activity for the relevant goods. The opponent did not establish the necessary causal link to show that, but for the relevant impediment, he would have used the mark.

The opponent did not make any submissions on discretion and the delegate was not prepared to exercise discretion in his favour.

 

Allergan Holdings France SAS [2018] ATMO 84 (31 May 2018)

Allergan successfully resisted revocation of acceptance of its applications for trademark registration of JUVEDERM word and logo filed on 4 July 2016.

IP Australia indicated an intention to revoke acceptance of these applications because of a subsequently filed application for trademark registration of Juvederm filed by Dermavita Company on 14 October 2016 which claimed Convention priority from a Norwegian application filed on 22 April 2016.

Allergan contended the Convenetion priority claim was invalid because the Norwegian Juvederm application was not Dermavita’s first filed application for this mark. It had filed other applications for the same mark, covering the same or similar goods, since at least as early as 18 March 2015. In particular, an application for JUVEDERM filed in Bulgaria.

The delegate considered that JUVEDERM and Juvederm were the same mark for the purposes of s 29 and hence the Norwegian application for Juvederm was not the first filed application capable of supporting a valid Convention priority claim. Consequently, Allergan’s trademark applications should not be revoked.

 

Truma Geratetechnik GmbH & Co. KG v Actron Engineering Pty Ltd [2018] ATMO 85 (31 May 2018)

Unsuccessful opposition by Truma to an application for trademark registration of TRUMAX (Stylised) filed on 14 August 2013 for various air conditioning and related goods in class 11.

Under the s44 ground, the opponent relied on its prior registrations for TRUMATIC and TRUMA which covered similar air conditioning goods. However, the delegate did not consider the applied for TRUMAX (Stylised) mark to be substantially identical with or deceptively similar to either of these registered marks.

 

Hilton Worldwide Inc v Waldorf Australia Group Pty Ltd [2018] ATMO 86 (31 May 2018)

Successful opposition by Hilton to applications for trademark registration of WALDORF APARTMENTS in classes 37, 19, 35 and 36. The class 37 application was filed on 3 July 2008. The class 19 application was filed on 10 April 2013. The class 35 application was filed on 1 August 2014 being a divisional of an earlier application filed on 3 July 2008. The class 36 application was filed on 4 August 2014 and also was a divisional of an earlier application filed on 3 July 2008.

A decision involving earlier oppositions is reported here

The opponent’s WALDORF ASTORIA brand of hotels date back to 1893.

The applicant’s WALDORF APARTMENTS brand of furnished and serviced apartments date back to 1983.

The s60 reputation ground of opposition was upheld. The delegate was satisfied that, at the very least, the opponent’s WALDORF ASTORIA trade mark had a substantial reputation in Australia before 3 July 2008 with respect to hotel and short-term and long-term accommodation and property management services, and that this particular trade mark is commonly used and recognised, in Australia and throughout the world, in the shortened form WALDORF to indicate the WALDORF ASTORIA trade mark owned by the opponent. The delegate was also satisfied that there is a real and tangible danger of confusion taking place between the opponents WALDORF trade mark and the applicant’s WALDORF APARTMENTS trade marks.

 

Patron Spirits International AG v Fernbrew Pty Ltd [2018] ATMO 87 (31 May 2018)

Unsuccessful opposition by Patron Spirits to an application for trademark registration of The Pirate Bay Rum Company filed on 5 April 2016 for various alcoholic beverages in class 33.

The opponent relied on registration and use of its PYRAT trade mark which had been marketed for rum sold in Australia since 2005.

Under s44, the opponent relied on its prior registration for PYRAT covering similar goods. However, the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to PYRAT.

Under the s60 ground, the delegate was not satisfied the opponent’s PYRAT trade mark had acquired sufficient Australian reputation and, even if it did, there was unlikely to be a risk of confusion given the differences in the respective marks.

Given this finding on reputation, the s42(b) contrary to law ground, based on contravention of the Australian Consumer Law for misleading or deceptive conduct, also failed.