Trade Mark News & Information

Trademark Registration-June 2016-ATMO Decisions

Bellevue Consultancy Services Pty Ltd [2016] ATMO 33 (2 June 2016)

Unsuccessful objection to revocation of acceptance of applications to register the trade marks CRADLE MOUNTAIN BEEF and CRADLE MOUNTAIN LAMB filed on 28 September 2015 for fresh meat in class 29.

The Examiner conducted some research into the geographical significance of Cradle Mountain and noted that it is the name of a well known mountain range in north-western Tasmania, but fresh meat is not normally associated with its geographical features because it is a heritage listed National Park area with no grazing allowed.

However, further research conducted after the trade mark applications were accepted disclosed that there is and has been a livestock industry in and around the Cradle Mountain area since the 1800s. Following this, the Registrar notified the applicant of the intention to revoke acceptance of these applications.

The hearing officer noted that “two factors must be satisfied before acceptance may be revoked. Firstly the Registrar must be satisfied that the application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the application was accepted. The second is that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist… It is not necessary for the Registrar to identify a specific error that led to the acceptance or a special circumstance that warrants revocation.”

The hearing officer considered that a s41 non distinctiveness objection was appropriate and went on to note that “Cradle Mountain is a mountain in north-western Tasmania, situated in the Cradle Mountain – Lake St Clair National Park. It is one of the principle tourist destinations in Tasmania. Areas surrounding the national park are used for agriculture, including livestock. The ordinary signification or meaning of the words CRADLE MOUNTAIN BEEF and CRADLE MOUNTAIN LAMB is beef and lamb products from Cradle Mountain. This is not to say that the ordinary meaning is restricted to the precise area delineated as the topographical feature ‘Cradle Mountain’. Rather it extends to the area surrounding Cradle Mountain of which Cradle Mountain might be said to be a landmark or feature. Given this ordinary meaning, it is likely that other traders will wish to use the words CRADLE MOUNTAIN BEEF or CRADLE MOUNTAIN LAMB to signify a connection between their beef or lamb products and that area.”

The Examiner incorrectly focused on the mountain and National Park itself and not upon the surrounding region.

While the applicant’s business had a long history of grazing cattle in the Cradle Mountain Highlands and operating the only abbatoir in the area, it had only recently developed the applied for trade marks as brands of this business.

As to whether it was reasonable to revoke acceptance, the hearing officer noted that oppositions filed by Winworld Australia Pty Ltd were in their very early stages and it was appropriate for these trade mark applications to be returned to examination.

It is worth noting there is an existing trademark registration for CRADLE MOUNTAIN for dairy products in class 29 dating from 1998 which was registered without objection and no supporting evidence of use was filed.

 

Rosbert International Pty Ltd as the Trustee for Rosbert International Unit Trust. [2016] ATMO 35 (10 June 2016)

An application for trade mark registration of Thermo’s by adventureline Logo shown below filed on 14 July 2014 for various apparel in class 25 was opposed by Thermos LLC.

Trademark Registration Thermos

This matter involved an unsuccessful application, under Regulation 5.15, for an extension of time for the trade mark applicant to file evidence in answer to the opposition.

The due date for the applicant to file its evidence in answer was 22 January 2016. On that date, it applied for an extension and subsequently filed this evidence on 1 February 2016.

The applicant did not tender a detailed time line of steps taken to prepare the evidence and so it was impossible to ascertain if it had acted promptly and diligently at all times. There was also some misunderstanding attributable to the applicant’s legal representative not being recorded as the address for service which resulted in correspondence from IP Australia being sent to the applicant. The hearing officer attributed these misunderstandings to the applicant and its legal representative failing to properly inform themselves of the opposition process.

The applicant could not show that it had made all reasonable efforts to comply with all relevant filing requirements and had acted promptly and diligently at all times. Further, there were no exceptional circumstances that warranted the extension. Consequently, in keeping with the strict regime governing extensions, the hearing officer was obliged to refuse the extension application.

 

Next Group Plc v Nexcorp Australia Proprietary Limited. [2016] ATMO 34 (14 June 2016)

Unsuccessful oppositions by Next Group to trademark registration of the three NEXTRA Logos shown below filed on 10 and 17 January 2012 for various retailing services in class 35.

Trademark Registration Nextra 1

Trademark Registration Nextra 2

Trademark registration Nextra 3

The opponent is a UK company which operates many NEXT branded stores and sells clothing and homewares items to consumers in a number of countries. Australian online sales commenced in 2010.

The applicant franchises use of its Nextra trade marks in connection with newsagency stores selling newspapers, magazines, stationery and other miscellaneous items. The first store opened in 1995 and, by December 2012, there were some 295 franchised stores.

The s58 ownership ground of opposition failed because the hearing officer did not regard any of the Nextra trade marks to be substantially identical to NEXT.

Under the s44 ground, the opponent relied upon a prior trademark registration for NEXT in class 35 and a pending application for NEXT in classes 9, 14, 18, 25 and 35 which covered similar services or closely related goods. However, the hearing officer did not regard Nextra to be deceptively similar to NEXT, so that ground also failed. Next does not retain its identity in Nextra as the distinguishing or essential feature of it. The comparison is between a relatively common dictionary word (NEXT) with an invented word with no obvious connotations (Nextra). The hearing officer considered them to be quite different with no common idea.

The opponent also pursued the s59 lack of intention to use ground based on the applicant’s evidence failing to include details of any franchise agreement demonstrating control over the use of the Nextra trade marks. However, the hearing officer noted the filing of the trade mark applications raises a presumption of intention to use and there was a single website established in 2002 creating an inference that the applicant is the moving force behind this. Consequently, this ground also failed.

Under the s60 reputation ground, the hearing officer was satisfied the opponent had a very significant reputation in the UK, but it was harder to assess the Australian reputation mainly attributable to online sales for, at best, a two year period with minimal information on advertising and promotion over that period in Australia. Nonetheless, the hearing officer was prepared to accept that the opponent had established a modest Australian reputation in its NEXT trade mark as at the relevant dates in January 2012, but primarily in connection with clothing and retailing of clothing, not for general retailing. Given the commercial use of both parties’ trade marks, the hearing officer considered the absence of any evidence as to confusion was telling, but acknowledged that registration of the Nextra trade mark for retailing services generally could potentially place the applicant in direct conflict with the opponent’s primary business. Nonetheless, the hearing officer was not satisfied there would be a likelihood of confusion. So that ground of opposition failed as well.

Since the s60 ground failed, the opponent could not establish the higher burden of proof necessary to show that applicant’s conduct would be contrary to the Australian Consumer Law or constitute passing off; so the s42(b) ground also failed.

The opponent also resorted to the s62A bad faith ground and asserted that the applicant had actual or constructive knowledge of its NEXT mark and adopted a similar font and styling, but the hearing officer was not satisfied those submissions, even if proven, were compelling evidence of bad faith.

 

Havana Club Holding SA and Corporacion Cuba Ron S.A. v 1872 Holdings, V.O.F. [2016] ATMO 37 (21 June 2016)

Successful oppositions by Havana Club Holding and Corporacion Cuba Ron to trademark registration of MATUSALEM THE SPIRIT OF CUBA LIBRE, MATUSALEM EL ESPIRITU DE CUBA and MATUSALEM EL ESPIRITU DE CUBA LIBRE filed on 1 August 2013 and 10 February 2014 for alcoholic beverages in class 33.

Havana Club Holdings is a member of the Pernod Ricard group and has been selling HAVANA CLUB rums originating from Cuba for many years around the world. Corporacion Cuba Ron was granted, by the Cuban Office of Intellectual Property in 2010, the exclusive right to use the Geographical Indication CUBA for Cuban rums.

The applicant’s predecessor in business and other related companies had a long history of producing and selling MATUSALEM rum originating from Cuba until the Castro regime came into power. The trade mark applications were intended to inform consumers of the applicant’s Cuban heritage, but the labels of its MATUSALEM rum state the product is made in the Dominican Republic.

The opponents prevailed under s61 on the basis that the applied for trade marks contained a false geographical indication. The hearing officer considered that Australian consumers are likely to focus on the word CUBA and appreciate that Cuba is a famous producer of rum, thereby believing the rum to have originated from Cuba.

Although the applicant’s labels contained wording to indicate its rum is made in the Dominican Republic and contain the history of the applicant, the opponents’ evidence included instances of actual demonstrated confusion with consumers and suppliers mistakenly referring to the applicant’s rum as originating from Cuba. The applicant was unable to make out any of the defences contained in s61.

 

Brock Beauty Inc [2016] ATMO 44 (30 June 2016)

The applicant was successful in overcoming an examination objection to its application for trademark registration of BROCKBEAUTY filed on 9 October 2014 for various personal care preparations in class 3 and vitamin and other medicated preparations in class 5.

The examination objection was taken under s41 and based on BROCK being a common Australian surname.

The applicant did not file any submissions before the examiner, but elected for a hearing and also filed some supporting evidence of use of the applied for BROCKBEAUTY trade mark.

The hearing officer agreed with the applicant that BROCK was not a particularly common surname (compared, for example, with SMITH) and the relevant goods in classes 3 and 5, while not being uncommon, are not as commonplace as, for example, foodstuffs. Also the word BEAUTY is not as directly descriptive as, for example SKIN CARE PREPARATIONS or VITAMIN SUPPLEMENTS and the lack of any space between the words BROCKBEAUTY is another (admittedly trivial) consideration. Further, the examples of use in the market place revealed by the Examiner’s research reflected use by the applicant.

Taking all these factors into account, the hearing officer considered BROCKBEAUTY was sufficiently distinctive and inherently adapted to distinguish the applicant’s goods and was not satisfied that other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the expression BROCKBEAUTY, or some mark nearly resembling it, upon or in connection with their own skin/hair care preparations and supplements.

 

Trident Seafoods Corporation v Trident Foods Pty Ltd [2016] ATMO 45 (30 June 2016)

Partly successful opposition by Trident Foods to applications seeking removal of three trademark registrations for TRIDENT covering various goods in classes 29 and 31 alleging non use during the three year period ending on 7 January 2014.

As a preliminary matter, the opponent’s evidence in support omitted two exhibits which were inadvertently not uploaded, but the hearing officer was prepared to consider these exhibits under Regulation 21.19. However, the hearing officer declined to consider a further declaration filed on behalf of the removal applicant primarily due to its low probative value and extremely late filing.

The opponent’s evidence noted that Manassen Foods Australia Pty Ltd acquired the opponent’s business in August 2000. There were statements that TRIDENT fish products and other food products have been sold for over 40 years in Australia. The products sold before the relevant date included fish, coconut creams and milks, curry pastes, dried fruit, noodles, snack foods, rice crackers, rice paper rolls, soups, stir fry sauces, tempura batter mix and vegetables. The products sold during the relevant period included coconut cream, curry pastes, canned vegetables, tempura batter mix, rice paper rolls, dried fruits and various noodles, but there was no mention of seafood other than a reference to tinned seafood being sold between January and April 2014. There were also statements of future plans. The hearing officer characterised this evidence as a holistic overview of the TRIDENT brand, but noted the absence of specific and dated examples showing use during the relevant period.

The removal applicant’s evidence included current examples of the Manassen website showing use of the TRIDENT brand for sauces, curry pastes, noodles soups and canned vegetables, but not any fish or seafood products. There were also current and archived examples of the Trident Foods website which did not disclose any reference to the TRIDENT brand. It contended that the opponent’s activity in January 2014 was not in good faith. Further, the invoices relied upon were from Manassen. There was no evidence that the opponent exercises financial control over Manassen or that Manassen was an authorised user of the TRIDENT trade mark.

The removal applicant is a large seafood distributor in the USA which offers products throughout the world, including under its TRIDENT SEAFOODS brand, but is forced to re-brand products for the Australian market at substantial cost.

The hearing officer was not satisfied that the opponent had done enough to rebut the allegation of non use. The invoices and undated exhibits were insufficient to establish use during the relevant period, let alone whether such sales were ordinary and general use judged by commercial standards. Hence, it was necessary to consider whether it was appropriate to exercise discretion and not remove some or all of the registered TRIDENT trade marks.

After considering the evidence, the hearing officer decided to exercise discretion in favour of the opponent and allow two of the registered TRIDENT trade marks (being those in class 29) to remain on the Register, but it was appropriate to remove the class 31 registration in its entirety. The factors in favour of the opponent were that there was no evidence of abandonment of the TRIDENT mark, it had a long standing reputation for providing class 29 TRIDENT goods at various times, and there were ongoing sales of TRIDENT goods after the relevant period ended. This reputation was sufficient for the hearing officer to conclude there would be a risk of confusion were the removal applicant to enter the Australian market under its TRIDENT SEAFOODS brand.