Trade Mark News & Information

Trademark Registration-ATMO Decisions-October 2018

Saravana Bhavan Holdings Limited v Hotel Saravana Bhavan Pty Ltd [2018] ATMO 157 (2 October 2018)

Application for trademark registration of composite mark containing the words HOTEL SARAVANA BHAVAN filed on 4 July 2014 in class 43.

Section 44(2) ground established, but applicant able to rely on prior continuous use under s44.

No evidence relied upon to support s60 ground.

 

Mint Payments Limited v Intuit Inc [2018] ATMO 158 (2 October 2018)

Application for trademark registration of MINT.COM filed on 4 October 2010 in classes 9, 35, 36 and 42.

Section 44 ground dismissed based on differences in goods.

Grounds of opposition under ss 41, 42(b), 58 and 60 also failed, largely due to insufficient evidence.

 

Jason McCombie v Naturalking Pty Ltd [2018] ATMO 159 (3 October 2018)

Application for trademark registration of composite mark containing the words BEE NATURAL filed on 2 May 2016 in classes 5 and 30.

Section 60 ground of opposition established based on reputation of opponent’s bee natural trade mark for cosmetics.

 

Lisa Reynolds and Margaret Woods v Avatar Singh, Harkirat Singh, Aero Associates Pvt. Ltd and Aero Traders Pvt. Ltd. [2018] ATMO 160 (3 October 2018)

Application for trademark registration of composite mark containing the word WOODS filed on 10 March 2016 in class 25.

The opponent’s applications for an extension to file evidence were refused and no evidence was filed by either party.

The s44 ground failed as the delegate did not consider the applied for mark to be deceptively similar to the opponent’s prior registered VIKTORIA + WOODS mark.

The grounds of opposition under ss 58A and 60 failed due to the lack of evidence.

 

Ex parte v Richard Peter Jefferies [2018] ATMO 161 (4 October 2018)

Application for trademark registration of Jade Finance filed on 16 November 2016 in class 36.

Section 44 ground for rejection satisfied. Delegate agreed with Examiner that the applied for mark is deceptively similar to prior registration for JADE FINANCIAL SOLUTIONS Logo.

 

Mo Industries, LLC v Prince Holly Tan, LLC [2018] ATMO 162 (4 October 2018)

Application for trademark registration of Ella Moon (stylised) filed on 24 January 2017 in classes 18 and 25.

Section 44 ground of opposition established. Delegate considered applied for mark to be deceptively similar to opponent’s prior registered ELLA MOSS trade mark.

 

Metropolitan Investment Group Pty Ltd v Autumnpaper Limited [2018] ATMO 163 (5 October 2018)

Applications by Autumnpaper (which owns the ALEXANDER McQUEEN fashion brand) seeking removal of trademark registrations for CHRISTINE MCQUEEN and CMQ (Logo) in classes 9, 10, 35, 44 and 45, alleging non-use during the 3 year period ending on 23 February 2017.

Autumnpaper was previously unsuccessful in its oppositions to registration of these trade marks. This delayed their registration. The applications for registration were filed on 22 March 2012, but not entered on the Register until 14 December 2015.

Under s93, an application for removal may only be made after a period of 5 years has passed from the filing date of the relevant trade mark registration. Here, the non-use removal applications were filed on 23 March 2017 (being the day after expiry of this 5 year period). The opponent’s challenge to the validity of the removal applications was rejected. [It should be noted there has since been a change in this legislation, which applies to all applications for trademark registration with a filing date on or after 24 February 2019, where a non-use removal application may be filed after 3 years has passed from the date the relevant trade mark was entered on the Register]

Metropolitan was partly successful in its oppositions to removal, with the delegate finding use of these registered marks for a limited range of escort services and other adult personal services in class 45. No reason to exercise discretion to permit registrations to remain for the other goods and services.

 

Roadwhyz NSW (Hunter) Incorporated v Western Australia Local Government Association [2018] ATMO 164 (5 October 2018)

Application for trademark registration of ROADwhyz filed on 28 November 2013 in class 41.

The opponent, Western Australia Local Government Association, relied on its prior registration of a composite mark containing the words RoadWise for road safety education services in class 41 as well as use of various trade marks containing of consisting of RoadWise.

The s58 ground of opposition failed with the delegate finding ROADwhyz is not substantially identical with RoadWise.

The s44 ground failed with the delegate finding ROADwhyz is not deceptively similar to the opponent’s registered composite mark. The delegate noted that the applicant could also make out a case for honest concurrent use.

The grounds of opposition under ss 42(b) and 60 also failed.

 

Eremad Pty Ltd v Portola Pharmaceuticals Inc [2018] ATMO 165 (8 October 2018)

Application by Portola Pharmaceuticals (represented by Gerard Skelly of Selfmark) seeking removal of a trademark registration for ANDEX in class 5 alleging non-use during the 3 year period ending on 20 June 2016.

The opponent, Eremad was unable to rebut the allegation of non-use and its ANDEX trade mark was removed from the Register in its entirety. The delegate was not prepared to exercise discretion in favour of the opponent because its arguments for doing so were largely based upon unsupported assertions.

The ANDEX prescription pharmaceutical product was listed on the Australian Register of Therapeutic Goods (ARTG) with a start date of 28 October 2010, but the opponent’s evidence asserting ongoing steps to commercialise this product was uncorroborated. Also, redacted documents obtained by the removal applicant from the TGA under Freedom of Information legislation cast doubt on the steps actually taken by the opponent or its authorised sponsor.

 

SUMOL+MARCAS, S.A. v Sumo IP Holdings Pty Ltd. [2018] ATMO 166 (8 October 2018)

Application by Sumo IP seeking removal of a trademark registration for SUMOL PORTUGAL in class 32 alleging non-use during the 3 year period ending on 25 October 2016.

The opponent’s evidence was sufficient to rebut the allegation of non-use.

 

Bentley Motors Limited. v Eastern Tomorrow (Jinjiang) Import & Export Co., Ltd [2018] ATMO 167 (9 October 2018)

Application for trademark registration of JACK BENTLEY (stylised) filed on 23 May 2016 for wine in class 33.

The opposition was upheld under the s62A bad faith ground.

The applicant did not file any evidence and the delegate was satisfied that it was aware of the opponent and its rights and reputation in the Bentley trade mark. The trade mark application was filed to take advantage of the opponent’s reputation in the Bentley mark, or the applicant otherwise sought to convey to consumers that it was associated or affiliated with, or otherwise endorsed by, the opponent, which is false.

 

Bentley Motors Limited. v Xianming Zeng [2018] ATMO 168 (9 October 2018)

Application for trademark registration of the letter B with Wings Design filed on 23 May 2016 in class 33.

The applied for mark was a copy of the opponent’s mark and the opposition was upheld under the s62A bad faith ground.

 

KRBL Ltd v PK Overseas Pvt Ltd [2018] ATMO 169 (15 October 2018)

Application for trade mark registration of a label mark containing the words INDIA SALAAM filed on 17 June 2015 for basmati rice from India in class 30.

The s44 ground of opposition upheld with the delegate finding the applied for mark was deceptively similar to the opponent’s INDIA GATE Label mark as shown below:

Trademark Registration India Gate Label deceptively similar to  Trademark Registration India Gate Label

 

Catchoftheday.com.au Pty Ltd v Trinity Two Pty Ltd [2018] ATMO 170 (23 October 2018)

Application for trademark registration of Catchmestore.com.au filed on 7 June 2016 for various retail and related services in class 35.

The opponent relied on the s44 ground, but it was dismissed. The delegate considered the applied for mark was not deceptively similar to the opponent’s registered CATCH OF THE DAY mark or any of the other registered marks containing CATCH. The delegate was dismissive of the opponent’s argument based on a family of CATCH marks.

The opponent did not file any evidence and so the grounds of opposition under ss 42(b), 58A, 60 and 62A also failed.

 

Horizons (Asia) Pty Ltd v White Prime Group Pty Ltd [2018] ATMO 171 (26 October 2018)

Application for trademark registration of a composite mark containing the words ALKALINE WATER ONLINE with a Map of Australia Design as shown below filed on 13 March 2013 for water filtering goods in class 11, mineral water in class 32 and retail services in class 35

Trademark Registration Alkaline Water Online Logo

The opponent relied on use and registration of its Water Online mark which was rendered in a stylised manner as shown below:

Trademark Registration Water Online Logo

The s44 ground of opposition failed because the delegate did not consider the applied for composite mark was deceptively similar to the opponent’s Water Online mark. The stylisation of the opponent’s mark and the design elements in the applied for mark were significant factors in distinguishing the respective marks.

The grounds of opposition under ss 41, 42(b), 43, 58, s8A. 60. 61 and 62A also failed.

 

Caffe Ducale Pty Ltd v Dukes Coffee Roasters (Wholesale) Pty Ltd [2018] ATMO 172 (26 October 2018)

Applications for trademark registration of DUKES (stylised) and DUKES filed on 10 September 2012 and 15 June 2016 for coffee related goods and services in classes 30, 35, 40 and 43.

The s41 ground of opposition failed. S41 as it stood before and after the 15 April 2013 amendments was considered. DUKES is a relatively common surname, but possesses some degree of inherent adaptation to distinguish and, in each case, the evidence of use from 2008 relied upon by the applicant was sufficient to demonstrate capacity to distinguish. The presence of the words COFFEE ROASTERS did not render the marks different to that applied for.

The S44 ground of opposition also failed. The opponent relied upon prior registrations for DUKE’S, CAFFE DUCALE, DUCALE and THE DUKE, but the delegate was satisfied the honest concurrent use and/or prior continuous use provisions could be applied in favour of the applicant.

 

The Real Thing Food Supplements (Pty) Ltd v Media Tag Pty Ltd, Robyn Lasarow and Graham Meyerowitz [2018] ATMO 173 (29 October 2018)

Application for trademark registration of THE REAL THING ORGANIC SUPPLEMENTS THAT KEEP IT REAL (stylised) filed on 7 August 2015 for food supplements in class 5.

The opponent, The Real Thing Food Supplements, prevailed under the s62A bad faith ground based on a prior commercial relationship between the opponent and one of the applicants, Robyn Lasarow who worked for the opponent for over two years.

The s58 ownership ground failed because the evidence was insufficient to show Australian use by the opponent of a substantially similar trade mark prior to the 7 August 2015 filing date.

 

Goeie Peer B.V. v Ariana Holdings Pty Ltd [2018] ATMO 174 (29 October 2018)

Application for trademark registration of SWEET SENSATION filed on 30 September 2016 for pomegranates in class 31.

The opponent, Goeie Peer prevailed under the s44 ground based on its prior registration for the identical mark in class 31. The delegate considered pomegranates to be similar goods to pears which were covered by the opponent’s registered mark.

 

Allied Pinnacle NSW Pty Ltd v Dingo Flour Mill Pty Ltd [2018] ATMO 175 (30 October 2018)

This concerned an application by Allied Pinnacle for an extension to oppose a non-use removal application filed by Dingo Flour seeking removal of Allied Pinnacle’s DINGO Logo trade mark registration.

This extension was allowed, but the link to the published decision is incomplete and the reasons are not provided.

 

Robert Sankey v Sales Personnel Australia Pty Ltd [2018] ATMO 176 (30 October 2018)

Application for trademark registration of MANLY WARRINGAH PEST CONTROL filed on 13 July 2016 for pest control and related services in class 37. This application was accepted based on supporting evidence of use with an endorsement limited to New South Wales.

The opponent, Robert Sankey carried on a business trading under the name of Dee Why Pest Control.

The opposition was successful under the s41(3) ground. The delegate was satisfied the applied for mark was not to any extent inherently adapted to distinguish the relevant services. The pre-filing evidence of use relied upon by the applicant was insufficient to show this mark does in fact distinguish the applicant’s services. The applicant owned an earlier registration for a stylised version of the applied for mark and the evidence largely disclosed use of this stylised version, rather than the plain words. Use of this stylised version did not constitute use of the plain word mark because the additions in the stylised version substantially affected the identity of the applied for mark. The delegate also discussed the differences between use of a business name and use of that name as a trade mark.