Trade Mark News & Information

Trade Mark Registration Sydney – ATMO Decisions – January 2022

Martin Richards v Black Star Pastry Pty Ltd [2022] ATMO 1 (4 January 2022)

Partly successful oppositions by Richards to trademark registration of BLACK STAR PASTRY (in plain word and logo forms) filed on 4 September 2018 for packaging in class 16, retail services in class 35 as well as various hospitality and food related services in class 43.

The oppositions were directed to challenging the applicant’s claims to class 35 retail services and class 43 restaurants, hospitality services and take away food services.

The s58 ownership and s60 reputation grounds were upheld, but the applicant was able to amend its applications.

The opponent has, since July 2007, used the trademark BLACKSTAR in relation to roasting coffee beans and selling coffee and other food products, initially through a premises in Brisbane with subsequent expansion to coffee carts and premises in other locations in Brisbane. It owned a trade mark registration for BLACKSTAR dating from 26 April 2007 covering coffee products in class 30 as well as a later registration for BLACKSTAR COFFEE Logo dating from 20 March 2009 in classes 29, 30, 31.

The applicant commenced its Black Star Pastry business in October 2008 selling various baked goods as well as coffee, initially through premises in Sydney with subsequent expansion to other locations in Sydney and Melbourne. The applicant also operated pop up stores in other Australian cities. It owned a trade mark registration for its Logo mark dating from 19 September 2011 in classes 16, 30 and 43, but it had to delete claims to provision of drinks and café services from class 43 to overcome objections based on the opponent’s earlier registered marks, so it just covered bakery services and providing food.

Under the s58 ground, the delegate considered each of the applied for marks to be substantially identical to the opponent’s BLACKSTAR mark. The opponent’s claim to ownership of the BLACKSTAR mark could be based on its 26 April 2007 trade mark registration as well as use of this mark for the provision of coffee and food by late 2007 which preceded the applicant’s first use. The delegate characterised the opponent’s earlier use to be in the nature of café services and not just coffee cart services, and went on to find the goods and services for which the opponent has earlier use or registration were the ’same kind of thing’ as the applicant’s claims to the challenged class 43 services. However, the delegate did not consider retail services in class 35 to be the ‘same kind of thing’ as café services. Hence, the s58 ground was established in relation to the applicant’s challenged class 43 services, but not class 35 services.

Under the s60 ground, the delegate was satisfied there is some level of reputation in the opponent’s BLACKSTAR word mark and BLACKSTAR COFFEE Logo mark in relation to coffee, and to a lesser extent, café services, but only where such services are provided in South East Queensland and considered that a likelihood of confusion would arise if the applied for marks were used in relation to the services of a specialty coffee retailer, but not general retail services. Hence, the s60 ground was also established, but only for specialty coffee retailing services in class 35.

The delegate also considered the s44 ground based on the opponent’s prior trade mark registrations, but concluded this ground did not support any additional basis for relief.

The delegate considered it appropriate to permit the applicant to amend its trade mark applications by (1) excluding specialty coffee retailing services from class 35 and restricting the class 43 specification by deleting restaurants, hospitality services and take away food services, so that it could proceed just for bakery services and providing food (which is consistent with the applicant’s 19 September 2011 registration for its Logo mark).

Martin Richards v Black Star Pastry Pty Ltd [2022] ATMO 2 (4 January 2022)

Unsuccessful opposition by Richards to trademark registration of BLK STR Logo as shown below filed on 17 December 2019 for various  printed matter in class 16, bakery products in class 30 and bakery, food and drink, and hospitality services in class 43.

The opponent relied on grounds of opposition under ss 42(6), 44, 58 and 60 but failed to establish any ground.

The evidence was consistent with that in the partly successful BLACK STAR PASTRY oppositions. However, here the applied for mark was sufficiently different to the opponent’s BLACKSTAR and BLACKSTAR COFFEE marks.

The s58 ownership ground failed because the applied for mark was not considered to be substantially identical with the opponent’s BLACKSTAR mark.

Under s44, the delegate did not consider the applied for mark to be deceptively similar to either of the opponent’s prior registrations for BLACKSTAR or BLACKSTAR COFFEE Logo. The delegate was not satisfied that BLK would be read as ‘BLACK’, or that ‘STR’ would be read as STAR and it is by no means certain that a consumer would instinctively insert the vowels necessary to form BLACK STAR.

Under s60, although the delegate was satisfied there is some level of reputation in the opponent’s BLACKSTAR word mark and BLACKSTAR COFFEE Logo mark, there was not a likelihood of confusion given the differences in the respective marks.

As the s60 ground failed, it necessarily followed the s42(b) contrary to law ground based on the opponent’s reputation also failed.

United Workers Union v Victorian Ambulance Union Incorporated [2022] ATMO 3 (10 January 2022)

Unsuccessful opposition by United Workers Union to trademark registration of VICTORIAN AMBULANCE UNION Logo shown below filed on 3 October 2019 for various goods and services in classes 16, 25, 35, 36, 41 and 45

The opponent relied on grounds of opposition under ss 41, 42(b), 43, 44 and 62A but failed to establish any ground.

The applicant was created and launched in June 2019 to provide an ambulance specific trade union. Before then, the opponent provided these union services, but as part of a larger union not limited to ambulance industry workers. The Opponent had never used either ‘Victorian Ambulance Union’ or ‘Ambulance Union’ as a trade mark and had no exclusivity over use of these terms; although it did hold various domain names containing the identifier ‘victorianambulanceunion’.  This term had only ever been used descriptively by or in relation to the opponent.

Although the words ‘Victorian Ambulance Union” were descriptive of a union for workers in the ambulance industry, the applied for mark when considered in its entirety was sufficiently distinctive to qualify for registration, so the s41 ground failed.

Under s42(b), the opponent contended that use of the term ‘union’ would constitute a misrepresentation as the applicant was not a registered under the Fair Work (Registered Organisations) Act 2009. However, the delegate was not satisfied as to there being any general prohibition arising from statute or case law as to when an organisation or entity may perform the services of a trade union or describe itself as a union. The delegate was not satisfied that the term ‘union’ refers to a class of entities to which the applicant does not belong.

The s62A bad faith ground also failed, particularly as the opponent could not establish exclusivity over the term ‘Victorian Ambulance Union’ in respect of goods and services provided by a trade union.

Under s43, the opponent failed to establish the presence of the word ‘union’ gave rise toa connotation likely to deceive or cause confusion.

Under s44, the opponent relied on prior registrations owned by the Ambulance Service of NSW which contained a Maltese Cross with the words NEW SOUTH WALES AMBULANCE, but the applied for mark was sufficiently different to each of them.

Mitsubishi Heavy Industries Ltd v BPS Financial Limited [2022] ATMO 4 (11 January 2022)

Unsuccessful opposition by Mitsubishi Heavy Industries to trademark registration of Qoin filed on 1 November 2019 for various goods and services in classes 9, 36, 38, 42 and 45, particularly with applications in the financial field.

The opponent relied on grounds of opposition under ss 42(b), 44, 58 and 60 but failed to establish any ground.

The opponent essentially relied on its prior use and registration of its QoEn marks, but the delegate did not consider them to be substantially identical or deceptively similar; so the grounds under s58 and 44 failed.

The delegate was not satisfied the evidence relied upon by the opponent supported a sufficient reputation in its QoEn marks; so the grounds under s60 and s42(b) also failed.

CELINE v Celine Victoria Robinson [2022] ATMO 5 (11 January 2022)

Unsuccessful opposition by CELINE to trademark registration of CELINE VICTORIA Logo shown below filed on 27 August 2020 for various apparel in class 25.

The opponent relied on grounds of opposition under ss 42(b), 44, 60 and 62A, but failed to establish any ground.

No evidence was filed, so the opposition could proceed only on the s44 ground based on the opponent’s prior registration for CELINE covering relevant class 25 goods.

The delegate considered the applied for mark was not substantially identical with or deceptively similar to CELINE. The addition of the CV device and the additional word VICTORIA were significant additions that have the effect of creating a mark that is visually, aurally and conceptually different. 

CELINE v Celine Victoria Robinson [2022] ATMO 6 (11 January 2022)

Successful opposition by CELINE to trademark registration of CELINE VICTORIA filed on 26 August 2020 for various apparel in class 25.

The opponent prevailed under the s44 ground based on its prior registration for CELINE covering relevant class 25 goods.

The delegate found the applied for mark was deceptively similar to CELINE. The addition of VICTORIA was not a transformative element. VICTORIA is an unusual surname and Australian consumers are attuned to the existence of different state branches and/or the use of a state to identify the provenance of goods, the delegate considered a significant proportion of consumers would see VICTORIA as a geographical reference. CELINE was regarded as the primary distinctive element in the applied for mark and consumers are likely to wonder whether the trade source of the opponent’s and applicant’s goods are one and the same.

Greater Dandenong City Council [2022] ATMO 7 (13 January 2022)

The applicant was unable to overcome a distinctiveness objection raised during examination of its application for trademark registration of SNOWFEST filed on 23 June 2020 for various entertainment, sporting and education related services in class 41.

The Examiner contended the applied for mark describes services relating to a festival featuring snow. The applicant filed evidence showing SNOWFEST being used as the name of a festival held annually since July 2013 directed to the Victorian market. The Examiner was critical of this evidence and contended it showed use of SNOWFEST in close proximity to SPRINGVALE ( being the name of a Melbourne suburb).

The delegate agreed with the Examiner that the ordinary signification of SNOWFEST is a snow themed festival and other traders would legitimately desire to use this term for its ordinary signification. The mark possesses a limited degree of inherent adaptation to distinguish, but the evidence largely showed use of SNOWFEST in combination with SPRINGVALE or other distinctive graphic elements and was insufficient to demonstrate capacity to distinguish.

Owlet Baby Care Inc v Owlet Home LLC [2022] ATMO 8 (14 January 2022)

Successful opposition by Owlet Baby Care to trademark registration of Owlet Home filed on 4 June 2020 for electric door bells, electronic access control systems, thermometers, scales, smoke detectors and fire alarms in class 9.

The opponent prevailed under the s60 ground based on the Australian reputation of its Owlet mark in relation to baby monitoring equipment with Australian sales commencing in April 2018.

Andrew Scott v The Line II Pty Ltd [2022] ATMO 9 (20 January 2022)

Unsuccessful opposition by Andrew Scott to trademark registration of SIGNIFICANT OTHER filed on 18 January 2019 for various apparel in class 25.

The opponent relied on the s58 ownership ground but failed to establish this ground.

The opponent relied on Australian use of SIGNIFICANT OTHER from February 2018 for a clothing retail business. However, the delegate did not consider such retail services to be ‘the same kind of thing’ as clothing and apparel (although they are closely related).

Hive & Wellness Australia Pty Ltd v Aphria Inc [2022] ATMO 10 (20 January 2022)

Unsuccessful opposition by Hive & wellness to trademark registration of CAPILANO filed on 13 September 2018 for various cannabis related products in classes 5, 31 and 34.

The opponent relied on grounds of opposition under ss 42(b), 44 and 60, but failed to establish any ground.

The opponent owned a prior trademark registration for CAPILANO covering all goods in class 30 and had used this mark in Australia since 1953 in relation to honey products including some limited medicinal honey products.

Under the s60 ground, the delegate was satisfied the opponent’s CAPILANO mark had acquired a significant Australian reputation for honey and honey preparations, but was not satisfied as to a likelihood of confusion.

Medicinal cannabis is legal in the Australian market, albeit in a highly regulated industry requiring a prescription from licensed medical practitioners. Recreational cannabis is presently illegal here.

Rather curiously the delegate assessed the risk of confusion having regard to the manner in which the applicant’s goods are sold in Australia (being limited to medical use), rather than having regard to the full scope of goods claimed in the application.

The applicant argued that the applicant’s specification is not limited to medicinal products and encompassed, by way of example, honey products infused by hemp, cannabidiol (CBS) or medicinal cannabis (which are products already available in the US market).

In any event, the delegate considered confusion unlikely in the context of a regulated medicinal cannabis market, but did not require any limitation of the applicant’s goods.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for mark would be contrary to the Australian Consumer Law and constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

The s44 ground failed because the delegate considered the applicant’s goods were not similar to those covered by the opponent’s CAPILANO registration. The opponent’s submissions on similarity of goods were based on the term ‘cannabis’ encompassing ‘hemp’. However, the delegate did not consider that cannabis and hemp are the same products (one being a highly regulated product, available by prescription for medical use only whose consumption can give rise to psychoactive drug effects and the other being a foodstuff/woven material that can be purchased by members of the general public). Nor did the delegate consider that the applicant’s goods included cannabis honey or similar foodstuff products. The respective goods were of a different nature for a different purpose and sold in different trade channels. 

Yey Pty Ltd v Active Skin Pty Ltd [2022] ATMO 11 (31 January 2022)

Partly successful opposition by Yey to an application for removal of its activeskin Logo trademark registration alleging non-use during the 3 years period ending on 29 June 2019.

The registration dated from 17 January 2006 and covered wholesaling and retailing of beauty products in class 35 and beauty services in class 44.

Much of the opponent’s evidence related to use of the registered mark before the relevant period. There were 3 variants of this mark used during the relevant period, being the ACTIVESKIN word mark and 2 other variants with differing fonts to the registered mark. The green shaded circle forming a background to the letter “a” in the registered mark was also not present. However, the delegate considered the changes in these variants did not substantially affect their identity and the essential feature was the words ACTIVESKIN. The use of these variants could be relied upon to show use of the registered mark.

The delegate was satisfied the evidence demonstrated use of the registered mark for all of the class 44 services as well as online retailing services, but not wholesaling services in class 35. The delegate was not prepared to exercise discretion to leave the mark on the Register for wholesaling services.

SawStop LLC v Felder KG [2022] ATMO 12 (31 January 2022)

Unsuccessful opposition by SawStop to trademark registration of PCS filed on 12 April 2019 for various machines and machine tools in class 7.

The opponent relied on grounds of opposition under ss 42(b), 58 and 60, but failed to establish any ground.

The s58 ownership ground failed because the delegate was not satisfied the opponent’s evidence demonstrated prior use of PCS as a trade mark in Australia. These letters were used as an acronym for the description ‘Professional Cabinet Saw” and as part of a model number.

Given this finding, the s60 ground also failed and, in any event, the delegate was not satisfied the opponent’s evidence supported an Australian reputation in PCS.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for mark would be contrary to the Australian Consumer Law and constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.