Rotary International v Interact Australia (Victoria) Ltd  ATMO 44 (2 June 2015)
An application for an extension of time to file evidence in support was refused.
Rotary International opposed registration of the Interact Australia trade mark shown below filed on 16 December 2010 for various services in classes 35, 36, 37, 39, 41, 43, 44 and 45.
The parties had previously agreed to the maximum cooling off period totalling 12 months for the purpose of negotiations and the deadline for Rotary to file its evidence in support was set at 1 December 2014. Rotary applied for an extension of time to file this evidence on the basis that further time was required to finalise some remaining terms of settlement and Interact consented to this extension. Despite this and Rotary’s further submissions, the delegate was obliged to refuse the extension. Settlement negotiations are not considered ‘exceptional circumstances’ under Regulation 5.15 and there is no legal basis for the Registrar to grant an extension for the purpose of negotiations.
Masi Agricola SpA v Oceans Estate Margaret River Pty Ltd  ATMO 38 (4 June 2015)
Unsuccessful opposition by Masi Agricola to registration of the trade mark ‘tomasi’ filed on 17 January 2013 for various alcoholic beverages in class 33.
Masi Agricola relied on its various prior registrations for trade marks containing or consisting of the word MASI for alcoholic beverages and the Australian reputation derived from its use of these MASI trade marks for wines which have been sold in Australia since 1982.
Oceans Estate’s evidence was that Tomasi is the family name of the owners of the company and used on labels for its wines since 2012.
Under the s44 ground, the hearing officer was not satisfied the applied for tomasi mark was deceptively similar to any of the MASI trade marks.
Under the s60 reputation ground, the hearing officer was not satisfied the MASI trade marks had acquired a relevant Australian reputation. The sales revenues and advertising expenditures were not high and the hearing officer was critical of the financial information including Masi Agricola’s MASIANCO mark and the absence of any apportionment of sales of wines under the various trade marks including MASIANCO.
Chromagen Solar Australia Pty Ltd v First Solar, Inc  ATMO 45 (5 June 2015)
Successful oppositions by Chromagen to registration of the trade marks FIRST SOLAR and First Solar Logo shown below filed on 29 April 2011 by First Solar for solar panel related goods and services in classes 7, 9, 11, 37 and 42.
The oppositions were upheld on the basis of Chromagen’s prior registrations for SOLAR FIRST covering, inter alia, solar heating apparatus in class 11 and solar cells and panels in class 9. These registrations dated from August 2004 and October 2009 respectively.
The delegate considered the goods and services covered by the opposed trade mark applications were similar or closely related to the goods covered by Chromagen’s registrations.
On the issue of deceptive similarity, the delegate was not convinced that the reverse order of the words or the additional graphic element distinguished the applied for trade marks from Chromagen’s SOLAR FIRST trade mark. Even though consumers would pay more attention to the purchase of solar panels for their home, there is a real and tangible risk of confusion.
First Solar also relied on its use of the FIRST SOLAR trade mark overseas from 1999 and in Australia since around 2008. Its solar panels were directed to energy utilities, whereas Chromagen’s SOLAR FIRST products were directed to the residential market and promoted through Bunnings stores. However, the delegate considered the evidence of Australian business activity was not sufficient to apply the honest concurrent use or other circumstances provisions of the Act.
Bayer AG v O’Hagan Medical Pty Ltd  ATMO 46 (5 June 2015)
Unsuccessful opposition by Bayer to registration of the trade mark ‘cognate’ filed on 13 June 2013 by O’Hagan Medical for various dietary and nutritional products in class 5 and nutritional advisory and consulting services in class 44.
Bayer relied on its prior registration for the trade mark KOGENATE dating from 9 August 1989 covering pharmaceutical preparations and all other goods in class 5.
Clearly there were overlapping class 5 goods and the delegate also expressed the opinion that nutritional preparations are similar to pharmaceutical preparations. However, the delegate did not consider any of O’Hagan’s class 44 services were closely related to pharmaceutical preparations.
The delegate considered the applied for cognate trade mark was not deceptively similar to the registered KOGENATE mark. While the respective trade marks contain some similarities, there is not a real, tangible danger of confusing them.
Hip Hop Beverage Corporation v Red Bull GmbH  ATMO 47 (5 June 2015)
Unsuccessful opposition by Hip Hop to an application for removal of its registered PIT BULL ENERGY DRINK trade mark filed by Red Bull alleging non use for any non-alcoholic beverages during the three year period ending on 10 July 2012.
Hip Hop sought to rely on extracts from the Food Standards Code and Customs requirements in its written submissions, but Red Bull objected to this material being admitted and the delegate agreed with Red Bull on this point.
Much of Hip Hop’s evidence was directed to establishing an intention to use the registered mark and efforts to appoint an Australian distributor for its products, but the delegate was not satisfied this evidence was sufficient to rebut the allegation of non use and there was no evidence of circumstances that were an obstacle to use during the relevant period, or any factors justifying a favourable exercise of discretion. Accordingly, the delegate directed the PIT BULL ENERGY DRINK trade mark be removed from the Register.
Garrett Electronics Inc  ATMO 48 (9 June 2015)
Garrett was able to overcome provisional refusals of the Australian designations of Its International Registrations for the trade marks GARRETT and GARRETT METAL DETECTORS for metal detectors in class 9.
The examination section had maintained objections that GARRETT was a surname and not capable of distinguishing the relevant goods. Garrett submitted that there was little likelihood of any person with the surname Garrett wanting to go into the business of manufacturing metal detectors in Australia.
The delegate referred to the High Court decision in Cantarella and the need to consider the ‘ordinary signification’ of a word. The delegate considered “the principle to be taken from that case is that ‘inherent adaptation to distinguish’ requires examination of the word itself, in the context of its proposed application to particular goods in Australia in order to determine whether it is part of a ‘common heritage’. That involves a practical evaluative judgment of what those words will signify to persons who will purchase, consume or trade in the goods. In order to make that judgment it may be necessary to consider evidence of what other traders in the same goods are doing.”
The delegate conducted some internet searching and ascertained the following:
- there are approximately 2000 adult Australians with the surname Garrett;
- the manufacture of metal detectors is not a common business in Australia;
- some of the manufacturers of metal detectors based in the United States use the surname of the founder of their business as a trade mark but this does not appear to be common practice in Australia for this industry.
Consequently, the delegate concluded “it highly unlikely that a person or persons with the surname Garrett will be manufacturing metal detectors in Australia and consequently I am satisfied that for those who purchase, use or trade in those goods the ordinary signification of Garrett is that of the name of a specific provider of those goods. In other words, Garrett is not a surname that is common to the trade or part of the common heritage. It is an indicator of trade source and capable of distinguishing the holder’s metal detectors from those of other traders.”
Intellectual Property Development Corporation Pty Ltd. v Reynolds Consumer Products, Inc.  ATMO 49 (9 June 2015)
Unsuccessful opposition by IPD to an application for removal of its registered CAPTAIN REYNOLDS trade mark filed by RCP alleging non use during the three year period ending on 1 September 2013 for any of the foils in class 6 or plastic bags and cling wrap in class 16 covered by the registration.
IPD relied on use of the following composite trade mark:
The delegate considered this was not use of the registered CAPTAIN REYNOLDS word mark. The additional elements substantially affected the identity of the word mark and could not be relied upon for the purpose of rebutting the allegation of non use. Further, the delegate was not satisfied there were any factors favouring the exercise of discretion and directed the registered word mark be removed from the Register.
Legend (Pacific) Pty Ltd v Multi-Holding AG  ATMO 50 (16 June 2015)
Unsuccessful opposition by Legend to registration of the trade mark MC4 filed on 5 July 2012 by Multi-Holding for electric, electromechanical and electronic components, as well as connectors and electric contact devices in class 9.
Multi-Holding had an earlier class 9 registration for the trade mark MC dating from 26 November 1979.
The opposition was based on non-distinctiveness under s41 and ownership under s 58.
The s41 ground alleged MC is a recognised abbreviation of ‘Multi Contact’ or ‘Multiple Contact’ used to characterise connectors used in solar products that ensure multiple contact, and the numeral 4 refers to 4mm wire associated with the solar panel. The delegate referred to the Cantarella case and considered the evidence relied upon by Legend did not demonstrate that the ordinary signification of MC4 is that of a description. Accordingly that ground of opposition failed.
The s58 ownership ground failed for lack of evidence that Legend or some other trader had earlier use of MC4 as a trade mark before Multi-Holding’s earliest Australian use in June 2012.
Abalner Pty Ltd  ATMO 51 (18 June 2015)
Abalner successfully challenged a proposal to revoke acceptance of its application to register the trade mark Blair’s Tyres filed on 11 July 2014 for distribution and retail services in class 35 and vehicle servicing services in class 37.
The proposal to revoke acceptance was based on BLAIR being a common Australian surname and that a s41 non-distinctiveness objection should have been raised during examination.
Prior to the hearing, Abalner filed evidence as to its use of the Blair’s Tyres trade mark in the conduct of its tyre supply and motor vehicle repair business since 1983.
The delegate considered this evidence was sufficient to overcome any s41 objection which should have been raised during examination and it was not reasonable to revoke acceptance. The delegate directed the trade mark proceed to registration with a s41(4) endorsement.
OneSteel Wire Pty Ltd v Austral Wire Products Pty  ATMO 52 (22 June 2015)
Unsuccessful oppositions by OneSteel to registration of the trade marks GalMAX, GalMAX FENCING and the composite mark shown below all filed on 11 November 2011 for steel wire in class 6
Under the s41 non-distinctiveness ground, OneSteel alleged the word mark applications were merely an abbreviated combination of the known words ‘galvanised’ and ‘maximum’, but this was quickly dismissed by the delegate who considered that GalMAX does not contain a direct reference to the relevant goods, rather it merely alludes to products which are highly or heavily galvanised.
Under the s44 ground, OneSteel relied on its prior registrations for the trade marks GALSTAR MAXI EXTREME, GALSTAR MAXI, GALSTAR FAT MAXI, GALSTAR MAXY, GALSTAR MAXY EXTREME and GALSTAR FAT MAXY. However the delegate was not satisfied that any of the applied for marks was deceptively similar to any of these registered marks. When considered in their entirety, the delegate was not satisfied the respective trade marks were similar enough to cause consumers to be deceived or confused as to their origin.
Under the s60 reputation ground, OneSteel relied on the reputation derived from use of its various GALSTAR trade marks, particularly GALSTAR MAXY and in its red and silver colour scheme, but the delegate considered that, given the differences with the applied for marks, confusion is unlikely, particularly as the elements in common are relatively descriptive or commonly used. The delegate considered the red and silver colour scheme argument was fairly tenuous. This colour scheme was used as part of the OneSteel branding, but the colour scheme used with the GALSTAR MAXY trade mark is primarily orange, being that used as part of the WARATAH branding. The delegate was not satisfied the public associates red and silver with OneSteel with any particular degree of exclusivity.
In light of this finding, the ground of opposition based on use of the applied for marks being likely to mislead or deceive and contrary to the Australian Consumer Law also failed. The s43 ground also failed because the delegate was not satisfied that a connection of sponsorship or affiliation with OneSteel exists.
PPG Industries Australia Pty Ltd v DuluxGroup (Australia) Pty Ltd  ATMO 53 (24 June 2015)
Unsuccessful opposition by PPG to registration of the trade mark ENDURE filed on 28 August 2009 by Dulux for water based coating materials for use in relation to timber and parquetry floors in class 2.
PPG owned a prior registration for the trade mark ENGINEERED TO ENDURE dating from 18 March 2009 and covering various coatings in class 2.
The opposition involved an assessment of the use by Dulux of ENDURE. The parties agreed that, if the evidence was sufficient to show this word was capable of distinguishing under s41(5), then the same evidence would be sufficient to show honest concurrent use to overcome PPG’s prior registration.
Under s41, the delegate referred to the High Court decision in Cantarella and to an older Trade Marks Office decision involving the YIELD trade mark and considered the word ‘endure’ may have some facility in relation to the goods and had a relatively low level of inherent adaptation to distinguish.
The evidence disclosed use of ENDURE by Orica as part its INTERGRAIN product range sold by Cabots Woodcare. The Cabots business division of Orica was sold to Dulux in 2010. ENDURE appeared as a second or third tier trade mark associated with ENVIROPRO which was more dominant on packaging. Nonetheless, the delegate was satisfied ENDURE ‘stands up on its own’ and is not a mere ‘limping’ trade mark.
Hence, the hearing officer was satisfied the evidence relied on by Dulux was sufficient to support registration of ENDURE under s41(5) and thereby, as agreed by the parties, also establish entitlement to registration under the s44(3)(a) honest concurrent use provision.
Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd  ATMO 54 (24 June 2015)
Successful oppositions by Target to registration of the trade marks shown below filed on 30 May 2013 for clothing, footwear and headgear in class 25 and retail sales services in class 35
This was a rare situation where an opposition was upheld on the s42(b) contrary to law ground. The delegate was satisfied use of the applied for marks would be contrary to s18 of the Australian Consumer Law 2010. This was due to the well known TARGET trade mark being frequently given a French pronunciation as “Tar jay’ or “Tar jey” such that consumers are likely to be misled or deceived into believing the applied for trade marks are associated or affiliated with Target. The delegate was not persuaded by the Applicant’s contention that the applied for marks would be viewed as a parody or satire, with the other matter appearing in these marks dispelling an association with Target.
Abaco Machines (Australasia) Pty Limited v Aardwolf Australia Pty Ltd  ATMO 55 (24 June 2015)
Successful oppositions by Abaco to registration of the trade marks AARDWOLF and AARDWOLF Logo shown below filed on 4 March 2013 by Aardwolf Australia for equipment used in the stone and construction industry in class 7
There was an objection raised during examination based on a prior registration for AARDWOLF owned by Herdgraph Pty Ltd and that company provided consent to Aardwolf Australia’s trade mark applications.
The oppositions prevailed under s62(b) on the basis that the consent letters signed by James Corbett on behalf of Herdgraph Pty Ltd were false in material particulars because, at the time of signing those consents, Herdgraph Pty Ltd was under external administration and Mr Corbett had no authority to provide consent having regard to s471A of the Corporations Act 2001.
Indeed, Aardwolf Australia conceded this, but argued the original objection based on Herdgraph’s prior registration was a technical one and that registration has since been removed from the Register for non-payment of the renewal fee.
The delegate noted that, even if he had discretion under s55(1), he would decline to exercise it because Aardwolf Australia has executed a falsehood upon the Registrar and that conduct should not be condoned or encouraged.
Mercury Retail Pty Ltd v Nile Clothing AG  ATMO 56 (25 June 2015)
Successful opposition by Mercury Retail to an application for partial removal of its registration for the trade mark THE NILE filed by Nile Clothing AG alleging lack of intention to use and non use for various retail and wholesale services in class 35 during the three year period ending on 12 November 2013.
Nile Clothing did not file any evidence or take part in the hearing.
The delegate was satisfied Mercury Retail had rebutted the allegation of lack of intention to use in its Statement of Grounds and Particulars.
Mercury Retail’s evidence demonstrated that it had been operating an online retail website at www.thenile.com.au and two eBay stores using THE NILE trade mark during the relevant three year period. This evidence was sufficient to rebut the allegation of non use.
Accordingly, the removal application failed and the delegate directed THE NILE trade mark to remain on the Register.
Allied Mills Pty Ltd  ATMO 57 (25 June 2015)
Allied Mills successfully challenged a proposal to revoke acceptance of its application to register the trade mark SUPERB filed on 27 June 2011 for flour and other mixes and premixes sold to bakeries on a wholesale basis in class 30.
The trade mark application was accepted on the basis of evidence of factual distinctiveness through commercial use for over 100 years prior to the filing date of the application and with a limitation to the specification of goods to make it clear the relevant products were directed to the wholesale market.
The proposal to revoke acceptance was on the basis the evidence was insufficient as it did not adequately demonstrate trade mark use of the plain word SUPERB.
The delegate noted that revocation of acceptance on the basis of a mere change of opinion is to be avoided.
Allied Mills did not file any additional evidence, so the delegate approached the matter with the same information and materials as made available to the examination section. The delegate expressed some reservation with the effectiveness of the restriction to the wholesale sector of the market, but was willing to give Allied Mills the benefit of the doubt on this aspect. The delegate also noted the evidence contained gaps between 1983 and 2010 as well as some weaknesses, primarily due to the presence of other trade marks. Nonetheless, the initial decision to accept the application on this evidence was not unreasonable.
As to whether it was reasonable to revoke acceptance, the delegate was critical of the lack of reasons given after the review by the examination section and considered this pointed to a change of opinion. Further, it was significant that no other party had opposed registration of the SUPERB trade mark application after it was advertised.
Consequently, the delegate considered revocation of acceptance was not justified and directed the trade mark application proceed to registration.
Bianco Construction Supplies Pty Limited v Bianco Hiring Service Pty Limited  ATMO 58 (26 June 2015)
Successful oppositions by Bianco Construction to registration of the trade marks BIANCO HIRE and BIANCO HIRE Logo shown below filed on 14 February 2012 by Bianco Hiring for various goods and services relating to portable building structures in classes 6, 11, 19, 35, 37 and 39.
The oppositions were upheld under the s58 ownership ground and the decision turned on the rather unusual facts in this case.
Bianco Construction relied on use, since 1977, of the trade mark BIANCO by various companies within a related Group and use, since 1988, of the BIANCO in Arch Logo mark shown below which was also registered as a trade mark from 14 November 1997. Bianco Construction also registered the word mark BIANCO with effect from 20 April 2005.
Bianco Construction and Bianco Hiring were not related companies, although there was a historical family relationship. Bianco Construction asserted they have a business relationship with shared administration and marketing services, under which Bianco Hiring is allowed to use Bianco Construction’s registered trade marks, but this business relationship was disputed by Bianco Hiring.
Bianco Hiring asserted that, on 1 July 2003, it acquired the Bianco Hire business from Bianco Building Supplies Pty Ltd (which was the original company in the Group of companies connected with Bianco Construction). It alleged this acquisition included all associated intellectual property rights.
Based on the evidence, the delegate formed the view that Bianco Construction was the true owner of the BIANCO word mark and BIANCO in Arch Logo mark. The 2003 Agreement with Bianco Hiring did not include ownership rights to any trade marks. Indeed, the hearing officer indicated that there may not have been any BIANCO HIRE common law trade mark. Rather, Bianco Hiring was a lessee of the BIANCO trade mark for the purpose of running the former hire business of Bianco Construction.
Mercury Retail Pty Ltd v Nile Clothing AG  ATMO 59 (29 June 2015)
Successful opposition by Mercury Retail to registration of the NILE SPORTSWEAR Logo trade mark shown below filed by Nile Clothing on 20 May 2011 for data systemisation and collection as well as computerised file management, with the exclusion of retail services in connection with jewellery or similar goods, in class 35.
Mercury Retail relied on its prior use and registration of THE NILE trade mark for online retailing services. The opposition was upheld under the s44 ground based on the registration for THE NILE trade mark dating from 11 December 2008 which covered ‘Distribution services being the wholesale and retail sale of books, magazines and e-books, music, videotapes, cassette tapes, compact discs and DVDs, clothing, shoes, hats, footwear and headgear, computer software, computer and video games and office products; providing online marketplaces for the foregoing; providing searchable online advertising directories for the foregoing; advertising and advertisement services; business consulting and advisory services; promoting the goods and services of others’ in class 35.
The delegate had no hesitation in finding these services to be similar to those covered by Nile Clothing’s application and that the respective trade marks were deceptively similar, particularly due to the prominence of the element NILE in each mark.
Maydel Extrusion Industries Pty Ltd v Plastic Extruders Ltd  ATMO 60 (30 June 2015)
Unsuccessful opposition by Maydel to registration of the trade mark VYNAGRIP filed on 15 June 2010 by Plastic Extruders for floor coverings in class 27.
Maydel asserted its trade mark registration for Vynagrip dating from 29 October 2003 for floor coverings in class 27, but Plastic Extruders relied on prior use of the VYNAGRIP trade mark. This use was actually by Maydel, but under the authorisation of Plastic Extruders.
The hearing officer was satisfied that, at least up until 2005 (when a 1995 Agreement expired), Maydel’s use was authorised by Plastic Extruders. While there was some ambiguity surrounding the relationship after 2005, the hearing officer was not prepared to infer that Plastic Extruders intended to pass ownership of the VYNAGRIP trade mark to Maydel.
Plastic Extruders contended that the trade mark registration was held by Maydel on constructive trust for Plastic Extruders, but this contention went beyond the delegate’s power to determine and would need to be decided by a court.
Maydel also relied on the s60 reputation ground, but the delegate considered the evidence was insufficient to show Maydel had acquired a relevant Australian reputation; so that ground of opposition failed.
Hard Candy Fitness, LLC v Hard Candy (Australia) Pty Ltd  ATMO 61 (30 June 2015)
Successful opposition by Hard Candy Fitness (the US company) to registration of the trade mark HARD CANDY filed on 31 October 2010 by Hard Candy Australia (the Australian company) for education, training, sporting and cultural activities in class 41.
The US company is connected with the well known entertainer, Madonna who released her Hard Candy album on 19 April 2008. It opened a fitness centre in Sydney under the HARD CANDY FITNESS brand on 1 July 2012, but previously announced its first fitness club in Mexico with a press release on 25 October 2010. The Mexico HARD CANDY FITNESS club subsequently opened in November 2010. There were also articles published on the Fox and CBS News websites relating to this launch and a website at www.hardcandyfitness.com which commenced on 29 October 2010.
The opposition was upheld under the s62A bad faith ground. Antonio Danilo was connected with the Australian company and various other companies which had a history of filing trade marks and registering business and domain names related to Madonna without any authority to do so.
The delegate was satisfied the Australian company’s activities ‘fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons’. Significantly, it filed the trade mark application just six days after the US company’s worldwide press release and two days after the US company launched its website.
Advance Magazine Publishers, Inc v Louver-Lite Limited  ATMO 62 (30 June 2015)
Unsuccessful opposition by Advance Magazine to registration of the trade mark SLIMLINE VOGUE filed on 20 December 2006 by Louver-Lite for blinds and related controls in classes 6, 9 and 20.
Advance Magazine published the women’s fashion magazine VOGUE and other associated magazines under mast heads including VOGUE AUSTRALIA launched in 1959 and VOGUE LIVING launched in 1967. It relied on its Australian magazines to contend that use of the applied for mark would be likely to deceive or cause confusion under s60 and be contrary to law because it would be likely to mislead or deceive consumers under s52 of the Trade Practices Act. Both grounds failed.
The delegate noted the word ‘vogue’ is an ordinary English word which is apt for normal description of goods which are designed to be trendy or fashionable. There was no pattern of licensing or endorsement of the VOGUE trade marks by Advance Magazine such that the public would, when seeing the SLIMLINE VOGUE trade mark, be caused to wonder whether the relevant blinds have the sponsorship or endorsement of the publisher of the VOGUE magazines. While it is possible that people seeing the SLIMLINE VOGUE trade mark might recognize the word ‘vogue’ as being the name of the opponent’s magazines as well as being descriptive of blinds, it is not likely that those people would take the further step and wonder whether there is some connection between the blinds and the magazine publisher by way of sponsorship, license or endorsement. The delegate concluded that “given the descriptive meaning of the word ‘vogue’, the extent of the reputation of the Opponent’s trade marks and the absence of evidence of public awareness of a prior pattern of licensing by the Opponent (or by similar magazine publishers) there is, in my assessment, no rational basis for such wonderings”.
Advance Magazine also relied on its various prior registrations for trade marks containing the word VOGUE including registrations covering curtains and retailing of curtains, it did not file any evidence or submissions to support such goods and services being similar or closely related to blinds. The delegate commented that it is not appropriate for the Registrar to act as an advocate on a person’s behalf. Advance Magazine carried the onus of establishing a ground of opposition and did not establish the goods or services covered by its registrations were similar or closely related to blinds. Accordingly, the s44 ground of opposition also failed.