Trade Mark News & Information

Trademark Registration – November 2016-ATMO Decisions

The Institute of Chartered Accountants in Australia v Association of International Certified Professional Accountants [2016] ATMO 94 (2 November 2016)

Unsuccessful opposition by The Institute of Chartered Accountants (Institute) to trademark registration of CHARTERED GLOBAL MANAGEMENT ACCOUNTANT filed on 22 March 2011 for various association services relating to accountancy and financial reporting in class 35.

Under the s44 ground, Institute primarily relied on its prior registrations for the composite mark shown below:

Trademark Registration Chartered Management Accountant Logo

The hearing officer did not regard the applied for mark to be deceptively similar to this composite mark. The individual words ‘chartered’, ‘management’ and ‘accountant’ are descriptive and common to the accountancy profession. The different word order is important and Institute’s registered mark contains a graphic element in a dominant position. As a result, there were sufficient differences to enable the respective marks to be distinguished and confusion is unlikely.

Under the s60 ground, Institute asserted it had a reputation in the trade marks THE INSTITUTE OF CHARTERED ACCOUNTANTS IN AUSTRALIA, CHARTERED ACCOUNTANTS and the CA Logo, but the hearing officer found it difficult to determine which of these marks, other than the CA Logo, had obtained the requisite reputation. The absence of the CA Logo in the applied for mark would be noticed by the likely consumer base of the relevant services and the hearing officer did not consider there to be a real and tangible danger of confusion.

Under the s42(b) contrary to law ground, Institute argued that it was established under a Royal Charter in 1928 and use of the word ‘Chartered’ in the applied for mark would be misleading or deceptive and contravene the Australian Consumer Law. However, there was no evidence that the applicant may not use this word in its trade mark and there was no evidence that Australian consumers would assume this word would mean a particular qualification or membership of a body established under Royal Charter.

Institute also pressed this point under the s43 ground, but the hearing officer was not satisfied the connotation (secondary meaning) of the word ‘Chartered’ clearly indicated the applicant was a body established by Royal Charter and, even if it did so, that would not necessarily lead to deception or confusion.

The s62A bad faith ground also failed. While the applicant would have been aware of Institute and its trade marks, the adoption of a trade mark containing ‘Chartered’ and ‘Accountant’ does not fall short of stands of acceptable commercial behaviour in the sense of being unscrupulous, underhand or unconscientious in character.

 

Urban Purveyor Group Pty Ltd v Sake No Hana Limited [2016] ATMO 95 (2 November 2016)

Unsuccessful opposition by Urban Purveyor to trademark registration of SAKE NO HANA filed on 8 October 2013 for various food and beverage related services in class 43.

Under the s44 ground, the opponent relied on its registrations for various trade marks containing the word SAKE within a circular device as shown below and covering restaurant services in class 43

Trademark Registration Sake Logo

The applicant’s evidence confirmed the word ‘sake’ is commonly understood in Australia as meaning a Japanese rice wine and used by various traders in the marketplace. As such, consumers would be familiar with this word to the extent that they would not necessarily assume that different trade marks containing this word denote the same trader. The hearing officer considered this word to be utterly descriptive in relation to rice wine and still has descriptive relevance when used in relation to restaurants and similar services. When the respective trade marks were compared in their entirety, they were unlikely to be confused and were not deceptively similar.

Under the s60 ground, the opponent relied on the reputation acquired from use of these registered marks from 20 October 2009 in connection with restaurant, bar, catering, function and event services offered through its Sake Restaurants and Bars. The hearing officer acknowledged that various degrees of reputation were established in each of these marks, but was not satisfied as to the likelihood of deception or confusion. If confusion was to arise, it is likely to be because the respective trade marks contain the descriptive word ‘sake’ rather than because of any reputation attributable to the opponent.

The opponent also relied on s42(b) and argued that use of the applied for mark would be contrary to the Australian Consumer Law and constitute passing off. However, since the s60 ground failed, the opponent could not satisfy the higher evidentiary onus to succeed on this ground.

 

MHFC Holdings Pty Ltd [2016] ATMO 96 (3 November 2016)

MHFC’s applications filed on 16 January 2014 to register the word mark MELBOURNE CITY FOOTBALL CLUB and the composite mark shown below were refused. The word mark was a divisional application with a priority date of 16 January 2014 while the composite mark was also a divisional with a priority date of 5 June 2014. Both applications covered various entertainment and sporting services in class 41.

Trademark Registration Melbourne City Football Club Logo

The word mark was refused for lack of distinctiveness. The hearing officer noted that distinctiveness of a trade mark is “not to be tested on whether other traders would want to use it as ‘a trade mark’ or as a ‘sign used to distinguish goods provided in the course of trade’ but rather for the sake of the signification the words forming the trade mark ordinarily possess”. The word mark was totally devoid of inherent adaptation to distinguish for most of the claimed class 41 services. There was a media release on 5 June 2014 regarding the change of name of the Melbourne Heart Football Club to Melbourne City Football Club and hence the applicant could not rely on any relevant use of the applied for mark before the filing date, so the s41(3) objection could not be overcome.

The composite mark encountered objections based on prior pending trade mark applications for the word mark Melbourne City Football Club owned by Melbourne City Football Club, Inc. which covered sports club services in class 41.

Rather curiously, the applicant decided to challenge the objections rather than defer its application and await the outcome of the cited applications.

Not surprisingly, the hearing officer gave sporting club services a broad interpretation and many of the applicant’s services were similar, so amendments to its specification were not feasible. Although the applicant’s marks contained additional matter and the words MELBOURNE CITY FOOTBAL CLUB were not distinctive, the hearing officer inevitably concluded the applicant’s composite mark was deceptively similar to the cited word mark. As a result, the composite mark application was refused.

 

Health Foods International Limited v Healthyby Pty Ltd [2016] ATMO 97 (4 November 2016)

Successful opposition by Health Foods International to trademark registration of the composite mark shown below filed on 22 June 2014 for various dietary and nutritional supplements in class 5.

Trademark Registration GI Nutri Life Logo

The opponent prevailed under the s44 ground and relied on its prior registrations for the word mark NUTRA-LIFE and the composite mark shown below which covered similar class 5 goods.

Trademark registration Nutra Life Logo

The hearing officer considered the applicant’s mark to be deceptively similar to the opponent’s registered marks. Although the word ‘Life’ is given more prominence, this composite mark is still likely to be recalled by reference to the words GI Nutri Life (with GI being a recognised acronym for Glycaemic Index). The overall impression is sufficiently similar such that consumers would be at least caused to wonder whether the goods originate from the same trader. There is also a risk of contextual confusion with the applied for mark being perceived as a brand extension of the opponent’s trade marks.

 

Calico LLC v Calico Global Pty Ltd [2016] ATMO 98 (4 November 2016)

Successful opposition by Calico LLC to trademark registration of the word mark CALICO filed on 26 September 2013 for research services in class 42.

The applicant also had an earlier registration for the CALICO mark in classes 41 and 44 dating from 7 June 2004 which the opponent is challenging on the ground of non use.

The opponent prevailed under the s62A bad faith ground.

The applicant’s business dates from June 2004 and concerns outdoor fitness with a mobile app and advertising driven revenue. The applicant asserted that it collects data for the purpose of further research services and asserted use of the CALICO mark for research services. However, the hearing officer was not satisfied the applicant had ever provided research services.

The opponent’s business dates from September 2013 and concerns research and development activities connected with the treatment of diseases associated with ageing and degenerative conditions.

The opposed trade mark application was filed a week after the opponent’s press release. The applicant was aware of this press release and contended that the trade mark application was filed to protect its position. However, the hearing officer found this to be disingenuous. Some time after October 2013, the applicant partly reworded its website to make reference to healthy aging, disease prevention and medical information.

The hearing officer considered the applicant’s conduct in filing a trade mark application which was excessive in scope and made with knowledge of the opponent’s interest in research and development was of an unconscientious character and fell short of ordinary standards of commercial behaviour. It was made in bad faith and that infects the whole of the application. The hearing officer refused the application in its entirety.

 

Storm Group v Storm International Group Pty Ltd [2016] ATMO 99 (8 November 2016)

Unsuccessful oppositions by Storm Group to trademark registration of the STORM word and  Logo mark shown below filed on 10 December 2012 for various personal services, immigration and visa related services in class 45

Trademark Registration Storm logo

The s58 ownership ground failed because the evidence disclosed the applicant was the first user of these trade marks in Australia in connection with recruitment of overseas students seeking to study in Australian educational institutions. The opponent asserted this use was under its authority, but the documents in evidence fell short of establishing this to the satisfaction of the hearing officer.

The s60 reputation ground also failed because the Opponent’s business activity and reputation was in India. It asserted the promotional materials used in Australia by the applicant were paid for by the opponent and the applicant used these trade marks with the authority of the opponent. However, this was not supported by the evidence. The hearing officer noted that there was no evidence to demonstrate that the applicant was acting on behalf of the opponent, rather than promoting its own business.

The opponent relied on the s42 (b) contrary to law ground of opposition, but that also failed. The opponent’s claim to ownership of copyright in the Storm Logo was not supported by the evidence which was contradictory on this point. The opponent also asserted that use of the applied for trade marks would be contrary to the Migration Act 1958 because the applicant’s director was not a registered migration agent, but the hearing officer pointed out that the applicant has the right to license the use of these trade marks or to use these marks in the future for services that it has an intention to branch into. Indeed, there was evidence the applicant referred clients requiring advice on immigration matters to a Registered Migration Agent. This was a serious allegation which could not be supported by the evidence.

 

N/C Quest Inc. v Bioag Pty Ltd [2016] ATMO 100 (14 November 2016)

Partly successful opposition by N/C Quest to an application for removal of its trademark registration for BIO-AGTIVE alleging non use during the three year period ending on 27 July 2014. This registration covered various chemicals, agricultural chemicals and fertilisers in class 1, exhaust apparatus   and agricultural equipment in class 7, and agricultural consulting services in class 44. The removal application was limited to the class 1 goods and class 44 services.

N/C Quest relied on use of the BIO-AGTIVE trade mark by a local Australian company, N/C Quest Pty Ltd. There was no direct evidence that the Canadian owner of the trade mark exercised financial or quality control over the Australian company, but the removal applicant did not challenge the use relied upon was authorised by the registered owner.

This case essentially turned on the evidence and whether there was relevant use of the registered mark during the relevant period and the type of goods/services provided. The hearing officer found there had been relevant use for “fuel additives, namely oxidizing agents” and limited the registration to these class 1 goods. There was no use for the class 44 services, so those services were removed. Further, there was no reason to exercise discretion in favour of the registered owner.

 

Techtronic Power Tools Technology Limited v Shenzhen Oneplus Science & Technology Co. Ltd [2016] ATMO 101 (14 November 2016)

Unsuccessful opposition by Techtronic to trademark registration of Oneplus (Stylised) filed on 31 October 2013 for a broad range of class 9 goods.

During examination, the opponent’s registration for the Logo trade mark shown below and covering goods in classes 7, 9 and 11 was raised as an objection, but this was overcome by amending the specification of the applied for mark

Trademark Registration One System Logo

After evidence was completed and written submissions filed, the applicant further amended its specification by deleting further class 9 goods which were identified in the opponent’s submissions as similar to those covered by its prior registration. As a result, the s44 ground of objection fell away.

The opponent pressed the s60 reputation ground and relied on use of its registered mark since 2005 for batteries and chargers, as well as power tools and accessories sold under its RYOBI brand.

The hearing officer considered the registered mark functions as a secondary brand to RYOBI and the use of both marks in proximity to each other affects the strength of reputation that the registered mark enjoys. After considering all the evidence, the hearing officer was not satisfied that a sufficient reputation was demonstrated in the registered mark for deception or confusion to arise, particularly having regard to the niche market for the opponent’s products and the difference between these goods and those of the applicant.

The opponent also relied on s42(b) and argued that use of the applied for mark would be contrary to the Australian Consumer Law and constitute passing off. However, since the s60 ground failed, the opponent could not satisfy the higher evidentiary onus to succeed on this ground.

The s58 ownership ground of opposition also failed. The opponent relied on its earlier use of its registered mark for radios, so this ground turned on whether radios are the same kind of thing as portable media players retained in the applied for mark. The hearing officer looked at publicly available resources and determined they were not the same kind of thing and so this ground of opposition fell way without the need to consider whether the respective trade marks were substantially identical.

 

First National Group of Independent Real Estate Agents Limited v REA Group Ltd [2016] ATMO 102 (14 November 2016)

Unsuccessful opposition by First National to trademark registration of REALESTATE.COM.AU filed on 18 April 2012 foe real estate advertising and real estate property services provided through a web portal in classes 35 and 36.

The opponent did not file evidence or participate in the hearing. It simply relied on its Statement of Grounds and Particulars.

Under the s41 distinctiveness ground, the hearing officer agreed the applied for mark was devoid of any inherent adaptation to distinguish, but has become factually distinctive through use since 1998. Reference was also made to REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559.

Under the s44 ground, the opponent relied on the following two prior registered marks owned by other parties

Trademark Registration My Real Estate Com Au     Trademark Registration RealEstate Com Au Logo

The hearing officer did not consider the applied for mark to be deceptively similar to either of there registered marks and, in any event, the applicant had been using its applied for mark since 1998 and could rely on prior continuous use under s44(4).

 

Intellectual Property Development Corporation Pty Ltd v Malina Schinder and Adrian Schindler [2016] ATMO 103 (14 November 2016)

Unsuccessful opposition by Intellectual Property Development Corporation to an application for removal of its trademark registration for the Logo mark shown below alleging non use during the relevant three year period ending on 21 July 2014. The registration covered beer in class 32.

Trademark Registration Terrys Mountain Logo

The opponent sought to rely on use by International Consolidated Business Pty Ltd of a trade mark which was different to its registered mark at its Thunder Road Brewery business.

The removal applicant contested whether this was use authorised by the registered owner and that it did not constitute use of the registered trademark.

The hearing officer described the similarities and differences between the label version of the mark in use and the registered trademark. Significantly the label in use disclosed two instances of TERRY’S MOUNTAIN SPRING which the hearing officer seized upon as being a material addition to the registered trade mark. This meant the opponent could not rely on this to rebut the allegation of non use.

Given this finding, the hearing officer did not need to decide whether this use was authorised by the registered owner.

The opponent argued that it was appropriate for the hearing officer to exercise discretion in its favour and leave the trademark registration on the register, but the hearing officer was critical of the absence of clear evidence as to the corporate links between the registered owner and the actual user of the variant of the registered trademark and declined to exercise discretion.

 

Beats Electronics, LLC v LG Electronics Inc. [2016] ATMO 104 (23 November 2016)

Successful oppositions by Beats Electronics to trademark registration of QuadBeat and Quadbeat3 filed on 25 July 2012 and 4 December 2014 respectively for various audio and other goods in class 9.

The opponent prevailed under the s60 ground based on the Australian reputation derived from its significant use of the trade marks BEATS and BEATS BY DR DRE in the USA since 2008 and in Australia since 2009 in relation to premium headphones, earphones and speakers. It also relied on evidence from a marketing expert on brand extension, Mr Paul Blanket.

Given the opponent’s use of the word BEATS with other additional words (appearing either before or after it), the hearing officer was satisfied that relevant purchasers will be likely to see the applicant’s marks as being related to the opponent and be likely to believe the applicant’s goods as a related product or new product line from the maker of BEATS headphones, speakers and earphones.

 

Monster Energy Company v Ox Group Global Pty Ltd [2016] ATMO 105 (23 November 2016)

Unsuccessful opposition by Monster Energy to trademark registration of the OX UNLEASH THE POWER Logo shown below filed on 14 February 2014 for energy drinks and other beverages in class 32

Trademark registration OX Unleash The Power Logo

 

Monster Energy, of course, markets energy drinks under its MONSTER and MONSTER ENERGY brands and also uses various taglines, namely UNLEASH THE BEAST, UNLEASH THE NITRO BEAST, UNLEASH THE ULTRA BEAST and ENERGY UNLEASHED typically rendered in a stylised manner. These taglines were also registered trademarks.

The applicant supplies hand tools to the construction industry and commenced selling an energy drink product in November 2012 with an Australian launch in June 2014.

The s44 ground failed because the hearing officer did not consider the applied for mark to be deceptively similar to any of the opponent’s trademark registrations for the taglines. The fact the respective marks shared the element “unleash the…” was not a major factor and the opponent was not in a position to claim a monopoly in registered marks in class 32 exploiting the idea of unleashing something. Indeed, there were already other registered class 32 marks owned by other parties containing the word ‘unleash’. Here, the respective marks were visually and phonetically different and confusion was unlikely. The hearing officer also noted that a similar finding was reached in the corresponding New Zealand opposition.

Under the s60 ground, the hearing officer was satisfied the opponent’s MONSTER mark had acquired a significant reputation in Australia, but the evidence relating to use of the taglines was less convincing because their use is much less prominent on the opponent’s drink cans and promotional materials. Nonetheless, the hearing officer was prepared to accept that there would have been a “threshold awareness” of the UNLEASH THE BEAST tagline in Australia, but the likelihood of deception or confusion is low, particularly given the differences in the respective trademarks.

The opponent also relied on s42(b) and argued that use of the applied for mark would be contrary to the Australian Consumer Law. However, since the s60 ground failed, the opponent could not satisfy the higher evidentiary onus to succeed on this ground.

Finally, the opponent contended that the applied or mark was filed in bad faith because the applicant seeks to allude to the opponent’s taglines and create an association between its trade mark and the opponent. However, this was based on inference and there was no direct evidence of unacceptable commercial behaviour. Consequently, this ground failed as well.

 

A & G Insurance Services Pty Ltd v Stratton Finance Pty Ltd [2016] ATMO 106 (28 November 2016)

Unsuccessful opposition by A & G Insurance to trademark registration of the STRATTON SIMPLY SMARTER FINANCE Logo shown below filed on 8 July 2013 for a broad range of services in classes 35, 36 and 39.

Trademark registration stratton Simply Smarter Finance Logo

The opposition was confined to the s44 ground with the opponent primarily relying on its prior trademark registration for Simply Smarter Insurance.

The applicant’s evidence included references to use and registration of trade marks owned by others containing ‘Simply Smarter’ and the hearing officer considered this to be a laudatory expression. Further, the phrase SIMPLY SMARTER FINANCE is dwarfed by the name STRATTON in the applied for mark and the hearing officer was not satisfied the shared element ‘Simply Smarter…’ has retained its identity as an essential feature of this mark. Given the overall visual and aural differences between the respective marks, the hearing officer considered the probability of deception or confusion to be trivial at best and rejected this ground of opposition.

 

NV Sumatra Tobacco Trading Company v Qantas Airways Limited [2016] ATMO 107 (28 November 2016)

Unsuccessful opposition by NV Sumatra to an application for removal of its trademark registration for JET alleging non use during the three year period ending on 9 November 2014. The registration covered a range of goods and services in classes 14, 16, 18, 21, 24 and 42.

The opponent owned an earlier registration for the JET trade mark covering tobacco products in class 34.

The opponent conceded it had not used the JET trade mark at all and certainly not during the relevant period, but contended that it was not used because of circumstances that were an obstacle to such use. In particular, the Tobacco Advertising Prohibition Act 1992 which prevented the opponent from publishing advertisements or any sign or other visual image that promotes or is intended to promote the JET trade mark on labels, products and packaging for non-tobacco products in Australia.

The hearing officer construed this legislation as not resulting in all manners of use of the Jet trade mark being a prohibited tobacco advertisement. The opponent was at liberty to use this trade mark for the registered goods and services in ways which did not contravene this legislation. Nonetheless, the hearing officer did accept that the manner of intended use of the JET trade mark by the opponent would bring it within the meaning of a prohibited tobacco advertisement.

The hearing officer then went on to consider whether this legislation was the causal link for non use of the JET trade mark and was not satisfied that, but for this legislation, the opponent would have used the JET trade mark. The opponent’s class 34 registration dated from 1988 but it had never used this mark for its principal business (being the sale of tobacco products). The hearing officer was not persuaded that, in the absence of this legislation, the opponent would have used the JET trade mark. Consequently, the opponent could not rely on this legislation as a valid obstacle to use. There was no reason to exercise discretion in favour of the opponent, so the hearing officer directed the JET trademark registration to be removed from the Register.

 

Brightgreen Pty Ltd v Enlighten Australia Pty Ltd [2016] ATMO 108 (29 November 2016)

Unsuccessful opposition by Brightgreen to trademark registration of Chamealeon filed on 4 September 2013 for various lighting related goods and services in classes 9, 11, 35 and 42.

The applied for mark was accepted with a s44(4) endorsement with the applicant filing evidence of prior continuous use to overcome an examination objection based on the opponent’s registration for CHAMELEON dating from 24 February 2011 and covering lighting goods in class 11.

The applicant did not file any evidence in the opposition, but the opponent’s evidence in support attached a copy of the declaration filed by the applicant during examination which was obtained under the Freedom of Information Act.

Under the s44 ground, the opponent challenged the evidence filed in support of the applied for mark as not being sufficient to satisfy the prior continuous use requirement, but the hearing officer rejected this challenge and noted there was no evidence by the opponent which called into question the statements made by the applicant during examination.

The opponent also relied on the s58 ownership ground, but that also failed. It did not file any evidence as to use of its CHAMELEON trade mark, but merely relied on its trademark registration. The evidence filed by the applicant during examination demonstrated use from before the date of the opponent’s registration for the same kind of goods and so the hearing officer was satisfied with the applicant’s claim to ownership.