Trade Mark News & Information

Trademark Registration – ATMO Decisions – September 2018

Macy’s Merchandising Group Inc v Sheertex Pty Ltd [2018] ATMO 135 (3 September 2018)

Successful opposition by Macy’s to trademark registration of STYLE & CO filed on 11 April 2016 for various textile goods in class 24.

The applicant objected to parts of the opponent’s written submissions which, in effect, attempted to introduce new evidence. This objection was upheld by the delegate.

The opponent also belatedly attempted to amend its Statement of Grounds and Particulars to include the s62A bad faith ground, but the delegate refused this amendment.

In any event, the opposition was upheld on the s44 ground with the opponent relying on its prior registration for the identical STYLE & Co trade mark covering clothing, footwear and headgear in class 25. The delegate considered the applicant’s claim to textile goods in class 24 encompassed goods in class 25 made from textiles and hence were similar goods.

 

Kenny Ng & Peter Wu v Aussie Dazzling Life Pty Ltd [2018] ATMO 136 (4 September 2018)

Unsuccessful opposition by Ng and Wu to trademark registration of the composite UGG AUSSIE BOOTS & Device mark filed on 21 December 2015 for various shoes in class 25

Trademark Registration Ugg Aussie Boots Logo

The opponents relied on their prior registration for the Ugg Aussie Collection Logo shown below

Trademark Registration Ugg Aussie Collection Logo

However, the delegate did not consider the applied for mark was deceptively similar to this registered mark and so the s44 ground of opposition failed. The delegate concluded:

The common elements in the respective marks (‘ugg’ and ‘aussie’) are descriptive and there are sufficient differences in the manner in which those elements are displayed in the respective marks. A finding of deceptive similarity in this case would in effect provide the Opponent with a monopoly on registrations of devices for footwear containing the word ‘ugg’. The Opponent has no such monopoly. Although the marks share the words ‘aussie’ and ‘ugg’ I find that, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark; such confusion will only arise as a result of the presence, in both marks, of the descriptive words.

 

Fish London Limited v Tish & Snooky’s NYC inc [2018] ATMO 137 (4 September 2018)

Unsuccessful opposition by Fish London to trademark registration of TISH filed on 19 July 2016 for various personal care products in class 3.

Both parties filed evidence, but the opponent did not file any written submissions or participate in the hearing.

The opponent relied on prior use and registration of its FISH trade mark for a range of hair care and cosmetic products.

The s58 ownership ground failed because the delegate did not consider TISH to be substantially identical with FISH.

The s44 ground failed because the delegate did not consider the applied for TISH trade mark to be deceptively similar to the opponent’s registered FISH mark which covered similar goods.

The s60 ground failed because the delegate was not satisfied the opponent’s evidence supported an Australian reputation in its FISH mark.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

The s62A bad faith ground also failed.

 

P4L Corporation Pty Ltd [2018] ATMO 138 (5 September 2018)

An application for trademark registration of MORE CARE 4 LESS COST (Stylised) filed on 1 March 2016 for a broad range of class 35 services including retailing, advertising and marketing services was refused under s41 for lack of distinctiveness. The applicant relied on use of PHARMACY 4 LESS since 2007 and use of the applied for mark from June 2015 as a secondary brand or tagline connected with its PHARMACY 4 LESS retail pharmacy stores, but this was insufficient to satisfy the delegate was capable of distinguishing the applicant’s services.

 

Finsure Domain Names Pty Ltd v RESN Holdings Pty Ltd [2018] ATMO 139 (10 September 2018)

Successful opposition by Finsure to an application for removal of its trademark registration for MYloan alleging non-use for any of the registered class 36 services during the 3 year period ending on 4 December 2016.

FInsure relied on use of the phone word 1300 MYLOAN which the delegate considered was sufficient to constitute use of the registered MYloan mark.

 

Enterprise Above & Beyond Pty Ltd v Queensland Rugby Football League Limited [2018] ATMO 140 (11 September 2018)

Unsuccessful opposition by Enterprise Above & Beyond to trademark registration of QLD MAROONS filed as a divisional application with an effective priority date of 16 September 2013 for various class 25 goods.

The opponent owned prior trademark registrations for MAROONS WORKWEAR and MAROONLAND covering relevant class 25 goods, but there was no clear evidence of use of these marks prior to the relevant priority date. It was previously a distributor for the applicant’s State of Origin merchandise but that commercial relationship ended.

The applicant’s use was sufficient to overcome the s41 distinctiveness ground.

The delegate considered the applied for QLD MAROONS trade mark was deceptively similar to the opponent’s registered MAROONS WORKWEAR mark, but the applicant was able to rely on prior continuous use to overcome the s44 ground of opposition.

The s58A and s58 grounds failed because the opponent could not establish any relevant prior use of a similar mark.

The s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off was not supported by the evidence and also failed.

The s43 ground also failed because the delegate was not satisfied as to any connotation within the applied for QLD MAROONS mark which is likely to result in deception or confusion.

The s62A bad faith ground also failed.

 

Morgan & Hassam Investments Pty Ltd v French Blue Pty Ltd [2018] ATMO 141 (11 September 2018)

Unsuccessful opposition by Morgan & Hassam to trademark registration of FRENCH BLUE FLOWERS Logo shown below filed on 14 April 2016 for various wholesale and retail services in class 35.

Trademark Registration French Blue Flowers Logo

The opponent relied on the use since 2012 and reputation of its FRENCH FLOWERS trade mark for florists’ services.

Under s60, the delegate considered the reputation of the FRENCH FLOWERS mark to be low in Brisbane and very slight if considered on a national basis. Given the difference in the respective marks, confusion was unlikely.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

The s62A bad faith ground also failed.

 

Anagenix IP Limited v Pharmazen Ltd [2018] ATMO 142 (11 September 2018)

Unsuccessful opposition by Anagenix to trademark registration of ActiPhen filed on 3 May 2016 for various pharmaceutical preparations and nutritional supplements in class 5 and printed materials in class 16.

The opponent relied on use and registration of its ACTAZIN mark for similar goods.

The s44 ground failed because the delegate did not consider ActiPhen to be deceptively similar to ACTAZIN.

Under s60, the delegate was not satisfied the opponent’s ACTAZIN mark has acquired sufficient Australian reputation for dried kiwi fruit powder, so that ground failed.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

The s62A bad faith ground also failed even though there were some previous dealings between the parties and the applicant was well aware of the opponent’s ACTAZIN product.

 

Australian Professional Drag Racing Ltd v The Jamboree Aus Pty Ltd. [2018] ATMO 143 (12 September 2018)

Unsuccessful opposition by Drag Racing to trademark registration of PRO MOD Logo shown below filed on 28 April 2016 for motor racing related services in class 41.

Trade Mark registration ProMod Logo

The opponent only relied on s41, but failed to establish lack of distinctiveness.

 

Brilliance Publishing, Inc v My Brilliance Pty Ltd [2018] ATMO 144 (12 September 2018)

Successful opposition by Brilliance Publishing to trademark registration of BRILLIANCE PUBLISHING Logo shown below filed on 30 October 2014 for electronic publications in class 9, printed matter in class 16 and publishing services in class 41.

Trademark Registration Brilliance Publishing Logo

This trade mark was accepted with a s44(4) endorsement indicating reliance on prior continuous use.

The applicant was self-represented and did not timely file some evidence (pertaining to its prior continuous use of BRILLIANCE formative marks since 1981) referred to in its submissions and so that material could not be relied upon.

The opponent prevailed under the s60 ground based on its Australian reputation acquired through use since at least 2013 of BRILLIANCE PUBLISHING and BRILLIANCE AUDIO. The delegate was satisfied that, because of this reputation, use of the applied for mark would be likely to cause confusion.

 

Bent Creek Vineyards Pty Ltd v Long Lunch Wines Pty Ltd [2018] ATMO 145 (13 September 2018)

Unsuccessful opposition by Bent Creek Vineyards to trademark registration of Sir Lunch A Lot filed on 20 June 2016 for alcoholic beverages in class 33.

The opponent relied on ground of opposition under ss 58A, 60 and 43 but did not file any evidence and hence could not establish any ground.

 

Huntsman International, LLC v Ready Unit Company Pty Ltd as trustee for the Ready Unit Trust [2018] ATMO 146 (14 September 2018)

Unsuccessful opposition by Huntsman to trademark registration of HUNTSMAN INDUSTRIES filed on 31 May 2016 for various metal goods in class 6 and awnings and related goods in class 22.

The opponent relied on ground of opposition under ss 45, 58, 58A, 43, 60, 42 and 62A but did not file any evidence and hence the only ground that could be considered was under s44 but it failed.

 

Ferrero S.p.A v Nuts-about-tella Pty Ltd [2018] ATMO 147 (18 September 2018)

Unsuccessful opposition by Ferrero to trademark registration of ‘nuts-about-tella’ filed on 28 January 2016 for food and drink services in class 43.

The opponent relied on Australian use since 1970 and registration of its various NUTELLA marks.

The applicant operates a food truck business selling products which feature the applicant’s Nutella hazelnut spread.

The s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to the registered NUTELLA marks.

The s60 reputation ground failed. Although the opponent’s NUTELLA mark had acquired a very significant Australian reputation, the delegate was not satisfied as to a likelihood of confusion.

Given the finding under s60, the s42(b) contrary to law ground based on misleading or deceptive conduct under the Australian Consumer Law and passing off also failed.

The s62A bad faith ground also failed.

 

Florabella International LLC v Enzymatic Pty Ltd [2018] ATMO 148 (18 September 2018)

Successful opposition by Florabella to trademark registration of  the SPEAKING ROSES word mark and a Logo version shown below filed on 4 and 31 May 2016 for various flowers in class 31 and related retail services in class 35. The Logo application also covered printing related services in class 40.

Trademark Registration Speaking Roses Logo

Both parties filed evidence, but the applicant did not file written submissions or participate in the hearing.

The opponent’s evidence comprised declarations made by its Australian attorney outlining its business of licensing the SPEAKING ROSES trade mark for use in connection with fresh flowers with personalised messages printed on their leaves. There were 3 Australian licensees since 2009. The applicant had previously been in negotiations with the opponent as to becoming an Australian licensee.

The opponent prevailed under the s58 ownership ground with the delegate being satisfied the opponent’s evidence showed first use of the SPEAKING ROSES word mark by its Australian licensees during the period 2011 – 2016 in relation to the same kind of goods and services to those for which the applicant sought registration.

Significantly, the delegate considered the opponent’s SPEAKING ROSES word mark was substantially identical to the Logo version applied for by the applicant. The addition of the rose device to the words ‘Speaking Roses’ in the Logo version did not constitute an alteration or addition which substantially affected the identity of the SPEAKING ROSES word mark.

 

Rob Neely v Vaxxas Pty Ltd [2018] ATMO 149 (19 September 2018)

Unsuccessful opposition by Neely to an application for removal of his trademark registration for Nanopatch alleging non-use during the 3 year period ending on 2 August 2016 for all of the registered class 5 goods, being vaccines for human and veterinary use.

Both parties filed evidence and the removal applicant filed written submissions, but nether party requested a hearing.

The opponent’s evidence contained references to Nanopatch by other parties but did not include any of the research or other agreements relied upon to support use of this mark during the relevant period. Further, the product under development was a small patch placed near a cow udder that contains concentrates of vital nutrients or active pharmaceutical ingredients to reduce and inhibit mastitis in dairy cows. These goods were not vaccines, but were means for delivering them.

The delegate was not satisfied this evidence rebutted the allegation of non-use or justified the exercise of discretion and directed the Nanopatch trade mark be removed from the Register.

 

The Polo/Lauren Company LP v Horse Australia Pty Ltd [2018] ATMO 150 (19 September 2018)

Unsuccessful opposition by Polo/Lauren to trade mark registration of the composite mark shown below filed on 17 January 2012 for promotional marketing services in class 35

Trademark Registration Just Polo Logo

This opposition proceeded under the Trade Marks Act as it was prior to the 2012 Raising the Bar amendments.

The opponent filed evidence and the matter was suspended for some time for negotiations, but the applicant was unresponsive. The matter was eventually set down for hearing and the opponent relied on written submissions. The applicant did not file any evidence or file submissions.

The opponent relied on use and registration of its POLO word mark and Polo Player Logo mark shown below for a range of merchandise and retail stores. It pressed grounds of opposition under s42(b) contrary to law, s44 prior similar mark, s50 ownership, s59 intention to use, s60 reputation and s62A bad faith. However, the delegate was not satisfied it had established any one of these grounds.

Trademark Registration Polo Player Logo

The delegate commented that, while the opponent had sold various goods and provided retail services, its promotional services were directed to its own goods and not the goods of others. Also, there were differences in the respective marks. Hence there was unlikely to be a real risk of confusion and so the grounds of opposition under s60, s42(b) and s44 were not established.

The s58 ownership ground also failed due to the differences in the respective marks.

There was no evidence to support the s59 ground and a mere assertion of awareness of the opponent’s marks was not enough to satisfy the s62A ground.

 

Barry Plant Holdings Pty Ltd v Naked Real Estate Pty Ltd [2018] ATMO 151 (20 September 2018)

Successful opposition by Barry Plant Holdings to trademark registration of ‘select date’ and ‘select date lease’ filed on 13 October 2015 for various real estate related services in class 36.

Both parties filed evidence and submissions, but the applicant did not appear at the hearing.

The opponent prevailed under the s60 reputation ground based on use of its SET DATE trade mark since 2001 for real estate consulting services relating to a franchised real estate sales method. The delegate considered there to be a high degree of similarity between the respect marks and the target audience for the respective services would be essentially identical. Hence, the delegate was satisfied there would be  likelihood of confusion.

 

Omega Pharma Innovation & Development NV v Market Australia, Inc. [2018] ATMO 152 (20 September 2018)

Unsuccessful opposition by Omega Pharm to trademark registration of TLS filed on 15 June 2015 for various dietary food supplements in class 5.

The applicant did not file any evidence. Both parties filed submissions and appeared at the hearing.

The opponent relied on numerous grounds, but could not establish any one of them.

The opponent primarily relied on use and registration of its XL S Medical and XLS trade marks for the same kind of goods as those of the applicant. The delegate was not satisfied the opponent’s evidence demonstrated an Australian reputation had been acquired through such use and did not consider the applied for TLS trade mark to be substantially identical or deceptively similar to either of them.

 

Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153 (25 September 2018)

Unsuccessful opposition by Digitus Information Systems to an application for removal of its registered LawConnect trade mark alleging non-use during the 3 year period ending on 14 November 2016 for all of the registered goods and services in classes 9, 38, 41 and 42.

Both parties filed evidence and participated at the hearing.

The delegate was not satisfied the opponent’s evidence demonstrated use of the Law Connect trademark in the course of trade during the relevant period. The evidence included references to this trade mark, but in emails to demonstrate the Opponent’s inMailX productivity tool for Microsoft Outlook and were not in the course of trade. There were also undated materials and various screenshots, but the delegate was not satisfied they clearly reflect the situation during the relevant period and the opponent’s statements as to use were simply bald, unsupported assertions.

The delegate was not satisfied this evidence rebutted the allegation of non-use or justified the exercise of discretion and directed the LawConnect trade mark be removed from the Register.

 

Apple Inc. v Meracomm Pty Ltd [2018] ATMO 154 (26 September 2018)

Successful opposition by Apple to trademark registration of ‘apple juice’ filed on 20 March 2016 for various solar goods, batteries, charging stations for electric vehicles and fuel cells in class 9 and solar lighting goods in class 11.

Both parties filed evidence and written submissions, but the applicant did not appear at the hearing.

The opponent prevailed under the s60 ground based on the Australian reputation of its APPLE trade marks and the likelihood of confusion. The delegate noted the applied for mark could be interpreted by reference to its primary signification as the juice of an apple, but could also be interpreted as goods which provide electrical power to Apple branded products, given the colloquial meaning of ‘juice’ to refer to electricity or electrical power. This double meaning enhanced the potential for confusion given the nature of the applicant’s goods and the reputation of the opponent’s electronic products which require regular charging. The evidence also reinforced that third parties produce accessories for use with the opponent’s products.

 

MBF Finances Pty Ltd v PizzaExpress Limited [2018] ATMO 155 (28 September 2018)

Successful opposition by MBF Finances to an application for removal of its registered Pizza Express Logo trade mark shown below alleging non-use for all the registered food related services in class 43.

Trademark Registration Pizza Express Logo

The link to this decision was incomplete, but the headnote refers to use being established in Western Australia and it was not appropriate to impose a geographical limitation, so this trade mark was allowed to remain on the Register unamended.

 

Ex-Centris Production v 9197-3396 Quebec Inc [2018] ATMO 156 (28 September 2018)

Successful opposition by Ex-Centris to trade mark registration of BRUNCH ELECTRONIC Logo shown below filed on 20 May 2016 for eyewear in class 9, apparel in class 25, games and playthings in class 28, and entertainment related services in class 41.

Trademark Registration Brunch Electronik Logo

Both parties filed evidence, but the applicant did not file submissions or participate in the hearing.

The opponent prevailed under the s58 ownership ground based on first use of its BRUNCH ELECTRONIK trade mark for the production and promotion of music festivals and on plastic cups. The music festivals were held overseas, but promoted in Australia and the evidence included credit card purchases of tickets by Australians. Hence, the opponent could show first use of a substantially similar mark for the same kind of class 41 services in class 41.

The delegate commented that the other goods in classes 9, 25 and 28 are often sold at music festivals. The applicant did not make any attempt to differentiate these goods from the class 41 services and so the delegate refused the  trademark application in its entirety.