Trade Mark News & Information

Trademark Registration-ATMO Decisions- November 2018

Red Moon Srl [2018] ATMO 177 (1 November 2018)

Application for trademark registration of Swing Natural More Logo shown below filed on 22 September 2016 for goods in classes 29, 31, 32 and 33.

Trademark Registration Swing Logo

The applicant deleted class 33 to overcome a s44 objection based on a prior registration for SWING and a s43 plant variety objection based on this word referring to plants in the genera Malus, Prunus and Solanium  could only be overcome by restricting the class 31 specification to be in keeping with apples of the Malus variety ‘Swing’.

 

Nutrifield Pty Ltd v Smart Garden Products Limited [2018] ATMO 178 (1 November 2018)

Successful application for removal of Nutrifield’s trademark registration for SMART GARDEN Logo in classes 1, 5, 7, 31 and 44 for agricultural related goods and services alleging non-use during the 3 year period ending on 31 July 2016.

Nutrifield’s evidence was insufficient to rebut the allegation of non-use and the delegate was unwilling to exercise discretion even though the trade mark had been previously used; so directed the trade mark be removed from the Register in its entirety.

 

Tobzac Investments Pty Ltd [2018] ATMO 179 (1 November 2018)

An application for trademark registration for WEAVE (stylised) shown below filed on 1 June 2017 for furniture goods in classes 20, 23, 24 and 27 was refused based on non-distinctiveness.

Trademark Registration Weave Design

The delegate agreed with the examiner that the ordinary meaning of the word “weave” is to indicate the applied for goods have been woven or have a weave pattern.

 

Enterprise Above & Beyond Pty Ltd v Queensland Rugby Football League Limited [2018] ATMO 180 (6 November 2018)

Unsuccessful opposition by Enterprise to trademark registration of MAROONS filed on 16 September 2013 for goods and services in classes 14, 24, 28 and s41.

Enterprise was a former distributor of the applicant’s state of Origin merchandise and relied on its prior registrations for the trade marks MAROONS WORKWEAR and MAROONLAND for clothing in class 25. Its evidence did not clearly show any use of these marks before the filing date.

The applicant was able to rely on licensed use of MAROONS for television broadcast rights and other merchandise since 1980 in connection with the Queensland State of Origin rugby league team to overcome the s41 distinctiveness ground of opposition.

The s44 ground of opposition based on the opponent’s prior trademark registrations failed because the applicant’s goods were not similar to the class 25 goods covered by these registrations.

The other grounds of opposition under ss 58, 42(b), 43 and 62A also failed.

 

Pawrent, Inc. v Wenchelle Gianatti [2018] ATMO 181 (6 November 2018)

Unsuccessful opposition by Pawrent to trademark registration of PAWRENTING filed on 22 September 2015 for animal advisory related services in class 44.

The s60 ground of opposition failed because the opponent’s evidence was insufficient to show an Australian reputation through its use of the PAWRENT trade mark.

The grounds of opposition under ss 43 and 62A also failed.

 

Peter G Brock Pty Ltd v Darrel McLean [2018] ATMO 182 (7 November 2018)

Successful opposition by Brock to trademark registration of KING OF THE MOUNTAIN filed on 22 January 2016 for goods in classes 16 and 24.

The opponent was associated with the late Mr Peter Brock, a well-known Australian racing car driver who won the Mount Panorama, Bathurst event on numerous occasions and became known as the “King of the Mountain”. The s43 ground of opposition was upheld on the basis the applied for mark connotes some sponsorship or endorsement by the opponent.

 

A.I.A. Agricola Italiana Alimentare S.p.A v Borgo Developments Pty Ltd as trustee for The L Borgo Trust [2018] ATMO 184 (7 November 2018)

Unsuccessful opposition by AIA to trademark registration of Borgo Logo shown below filed on 14 November 2016 for meat and smallgoods related goods and services in classes 29, 35 and 43.

Trademark Registration Borgo Logo

AIA relied on use and registration of its Negroni Logo mark shown below:

Trademark Registration Negroni Logo

This mark has been used in Australia since 2007 in relation to smallgoods in colour as shown below:

Trademar Registration Negroni Colour Logo

The applicant has been using the applied for mark in Australia since the late 1970s.

The s44 ground of opposition failed because the delegate did not consider the applied for mark to be deceptively similar to AIA’s registered mark and commented that the graphic elements in common to both marks were commonplace geometric forms.

The s60 ground failed with the delegate finding AIA’s evidence established its Negroni Logo mark might have acquired some very modest level of awareness with a small section of the Australian public, but there was no possibility of confusion given the differences in the respective marks.

The grounds of opposition under ss 42(b), 58 and 62A also failed.

 

Joe Montalto v JD Sports Fashions plc [2018] ATMO 185 (8 November 2018)

Successful application for removal of Montalto’s registrations for two Pink Soda Logos in classes 18 and 25 alleging non-use during the 3 year period ending on 15 July 2016.

Montalto’s evidence was insufficient to rebut the allegation of non-use and the delegate was unwilling to exercise discretion and directed the trade marks be removed from the Register in its entirety.

 

Redsbaby Pty Ltd v Wensheng Zhou [2018] ATMO 186 (9 November 2018)

Decision cannot be reported due to incorrect link.

 

Agave Loco LLCv DZ Licores, S.L.U. [2018] ATMO 187 (14 November 2018)

Unsuccessful  opposition by Agave to trademark registration of LICOR 43 OROCHATA filed on 1 July 2016 for liqueurs in class 33.

The opponent relied on use and registration of its CHATA and RUMCHATA trade marks.

As a preliminary matter, the delegate considered the earlier 25 May 2016 Convention priority date was relevant to the grounds of opposition under ss 44 and 60, but the filing date was relevant for the s42(b) ground of opposition.

The s44 ground of opposition failed because the delegate did not consider the applied for mark to be deceptively similar to CHATA or RUMCHATA.

The s60 ground failed with the delegate not being satisfied the opponent’s marks had acquired a relevant Australian reputation as at the priority date. Given this, the s42(b) ground also failed.

 

MBIP Nominees v Meeka Pty Ltd [2018] ATMO 188 (19 November 2018)

Opposition to trademark registration of MEEKA Logo filed on 16 December 2015 for various personal care products in class 3.

This concerned a preliminary issue as to the weight to be given to parts of the opponent’s evidence.

The opponent did not file any evidence in support, but the applicant filed evidence in answer and the opponent then filed evidence in reply. The applicant challenged parts of that evidence as not being in reply to its evidence in answer and requested those parts be redacted. The delegate declined to redact, but considered it appropriate for the hearing officer, when deciding the substantive matter, to determine the appropriate weight that should be given to the parts of the opponent’s evidence which were not in reply and if relevant allow the applicant time to file further evidence in answer.

 

Hachette Filipacchi Presse v Lisson Nominees Pty Ltd as Trustee for PBS Unit Trust [2018] ATMO 189 (21 November 2018)

Successful opposition by HFP to trademark registration of ELLA filed on 19 July 2016 for various bathroom fittings in class 11.

The s44 ground was upheld with the opponent relying on its prior trademark registration for ELLE covering all goods in class 11. The delegate considered the applied for ELLA mark to be deceptively similar to the registered ELLE mark.

 

Seven Network (Operations) Limited v Bravo Media LLC [2018] ATMO 190 (22 November 2018)

Successful opposition by Seven to trademark registration of JUST DESSERTS filed on 11 May 2016 for reality television entertainment services in class 41.

The s41 ground was upheld. The delegate considered the ordinary meaning of “just desserts” to be a reality television show dedicated to desserts, although this expression had some degree of inherent distinctiveness as it was also a play on the expression “just deserts”. The delegate went on to consider the use of the applied for mark, but Australian use referred to the relevant show as TOP CHEF: JUST DESSERTS and the evidence did not provide information as to the degree of exposure of this show to Australian audiences. As such it was insufficient to support registration.

 

Biofarma v Ramsay Health Care Investments Pty Limited [2018] ATMO 191 (27 November 2018)

Unsuccessful opposition by Biofarma to trademark registration of NURAMEL filed on 11 July 2016 for dietetic products in class 5.

The opponent relied on its prior registration for MUNAREL which covered similar goods, but the delegate did not consider the applied for NURAMEL mark to be deceptively similar to MUNAREL and so the s44 ground of opposition failed.

 

Enagic Co. Ltd v Horizons (Asia) Pty Ltd [2018] ATMO 192 (27 November 2018)

Unsuccessful opposition by Enagic to trademark registration of KANGEN filed on 24 September 2016 for sales related services in class 35.

The opponent relied on use and registration of its KANGEN and KANGEN WATER marks in connection with water filtration and electrolytic equipment used in the production of alkaline water.

The applicant also had an earlier trademark registration for KANGEN in classes 11 and 32 with apparatus for water filtration being excluded from the class 11 goods and had used this mark since 2009 for bottled water and air purifiers.

The opponent relied on grounds of opposition under ss 42(b), 44, 58, 60 and 62, but could not establish any ground.

 

Kicking Horse Coffee Co. Ltd [2018] ATMO 193 (28 November 2018)

Application for trademark registration of KICK ASS filed on 9 August 2016 for various coffee, tea, malt, cocoa and chocolate beverages in class 30 as well as food and beverage services in class 43.

There was a s44 objection raised during examination based on a prior registration for a composite mark containing the words FLAVOUR THAT KICKS ASS and a Donkey Design shown below covering various food and beverage related services in class 43.

Trademark Registration Flavour That Kicks Ass Logo

Clearly the respective class 43 services were similar and the delegate considered coffee beans, ground coffee and other coffee goods in class 30 were closely related to the provision of coffee as a beverage by a café. The delegate also considered the applied for KICK ASS mark was deceptively similar to the registered composite mark.

The applicant filed a divisional application for the class 43 services and coffee related goods in class 30 which enabled the current application to proceed for the remaining goods in class 30.

 

Active Skin P/L v Yey P/L [2018] ATMO 194 (28 November 2018)

Unsuccessful opposition by Active Skin to trademark registration of ACTIVESKIN filed on 28 July 2016 for online retailing of personal care products in class 35 and beauty care related services in class 44.

The opponent relied on earlier registration rights and use of various ACTIVE SKIN trade marks from March 2004.

The applicant had earlier trade mark registrations for the activeskin mark and relied on use since April 2006.

After reviewing the evidence, the delegate noted that although each party is operating in the beauty/cosmetics industry with substantially identical trade marks, they appear to have effectively operated in separate spheres with the apparent consequence that the potential for any deception or confusion has been minimised and applied s44(3)(b) in the applicant’s favour to overcome the s44 ground of opposition arising from the applicant’s class 44 services being closely related to the class 3 goods covered by the opponent’s trademark registrations.

Although the opponent had first use for class 3 goods and class 35 wholesale distribution services, the s58 ground failed because this use was not in relation to the same or equivalent kind of services as those of the applicant.

The s58A ground of opposition failed because s44(4) was not applied.

The s60 ground failed because the delegate was not satisfied the opponent’s evidence established the acquisition of a sufficient reputation. Given this finding, the s42(b) ground of opposition also failed.