Trade Mark News & Information

Trade Mark Registration Sydney – ATMO Decisions – October 2021

Billie Inc v Sergey Kayudin [2021] ATMO 112 (1 October 2021)

Successful opposition by Billie Inc to trademark registration of BILLIE filed on 28 September 2018 for shaving products in class 3 and 8.

The opponent prevailed under the s59 intention to use ground.

The applicant did not file any evidence or participate in the opposition.

The opponent is a US based female first body brand which sells shaving and body care products for women.

The applicant and Maria Markina co-founded Athena Club, a US based feminine care brand. Ms Markina had subscribed to the opponent’s BILLIE mailing list. Athena Club had also launched new products corresponding to those marketed by the opponent in the US.

The opponent alleged the applicant had no intention of using the BILLIE mark, but had rather filed the trade mark application to prevent or limit the opponent’s business activities and/or to sell it to the opponent.

The delegate considered the opponent’s evidence was sufficient to cast doubt on the applicant’s intention and to shift the onus on to the applicant to justify his intention. Since the applicant did not file any evidence, the delegate was satisfied that it was more likely than not that the applicant lacked a genuine intention to use the BILLIE mark in Australia.

Weili Mu v Guotai Huang [2021] ATMO 113 (5 October 2021)

Unsuccessful opposition by Weilu Mu to trademark registration of Jazz New Boss Logo shown below filed on 19 July 2019 for various wines in class 33.

The opponent relied on grounds of opposition under ss 42(b), 58, 60 and 62A but failed to establish any ground.

The parties had been in a commercial relationship involving the sourcing of wine and the design of wine labels including a label for the words McLaren New Boss with an identical graphic image to that in the applied for mark.

The s58 ownership ground failed because the delegate considered the applied for mark was not substantially identical with the McLaren label.

The grounds under ss 42(b) and 60 failed because the evidence did not establish an Australian reputation in the McLaren Logo mark.

The s62A bad faith ground failed because the evidence failed to establish whether the parties had ever reached any agreement as to ownership of the label marks and the opponent could not satisfy its onus of proof.

Junhui Zheng v Weili Mu [2021] ATMO 114 (5 October 2021)

Unsuccessful opposition by Junhui Zheng to trademark registration of New Boss Concept filed on 28 May 2019 for various wines in class 33.

The opponent relied on grounds of opposition under ss 59 and 62A but failed to establish either ground.

The parties had been in a commercial relationship involving the sourcing of wine and the design of wine labels including a label for the words McLaren New Boss .

The s62A bad faith ground failed because the evidence failed to establish whether the parties had ever reached any agreement as to ownership of the label marks and the opponent could not satisfy its onus of proof.

The s59 ground also failed because the evidence was insufficient to establish a prima facie case of absence of intention to use the applied for mark so as to shift the onus onto the applicant.

Junhui Zheng v Weili Mu [2021] ATMO 115 (5 October 2021)

Unsuccessful opposition by Junhui Zheng to trademark registration of MAGIC TREE filed on 29 May 2019 for various wines in class 33.

The parties had been in a commercial relationship involving the sourcing of wine and the design of wine labels including a label with the words MAGIC TREE.

The opponent relied solely on the s62A bad faith ground, but the evidence was insufficient to establish this. The opponent’s evidence was from its legal representative without direct knowledge of the facts and there were inconsistencies as to whether the parties had ever reached any agreement as to ownership of the label marks.

Big Bus Tours Limited v Adam William Ford [2021] ATMO 117 (11 October 2021)

Successful opposition by Big Bus Tours to trademark registration of THE BIG BUS filed on 10 January 2018 for various tourism related services in class 39.

The opponent prevailed under the s41 distinctiveness ground.

The delegate considered the applied for mark had some degree of inherent adaptation to distinguish, but the evidence of use relied upon by the applicant under s41(4) was insufficient to establish capacity to distinguish.

The trade marks used by the applicant were composite marks and not just the words THE BIG BUS per se. The sales revenues and advertising expenditure were also relatively modest.

Aqi Care Pty Ltd v Pure Beginnings Pty Ltd [2021] ATMO 118 (11 October 2021)

Partly successful opposition by Aqi Care to an application for removal of its registration for the trade mark Pure Beginnings (Stylised) alleging no good faith use in the relevant 3 years period ending 26 July 2019.

The registration dates from 3 April 2006 and covered various cosmetic related goods in class 3.

The opponent was able to establish use of this mark only for baby lotion. The delegate was not prepared to exercise discretion and restricted the registration to these specific goods.

Home Box Office Inc v Hongyi Wu & Xia Yang [2021] ATMO 119 (11 October 2021)

Successful opposition by Home Box Office to trademark registration of Lannister & Device shown below filed on 7 December 2018 for meat in class 29 as well as wine related goods and services in classes 32, 33, 35, 41 and 43.

The opponent prevailed under the s58 ownership ground.

The evidence relied upon by the applicants pointed to Hongyi Wu’s claim to ownership, but Xia Yang’s involvement in authorship was not established.

Taliberry Entertainment Pty Ltd v 1DANCE PTY LTD [2021] ATMO 120 (12 October 2021)

Successful opposition by Taliberry to trademark registration of 1Dance Africa filed on 18 October 2019 for various entertainment related services in class 41.

The opponent prevailed under the s58 ownership ground.

The applicant did not file any evidence or participate in the hearing.

The delegate was satisfied the opponent was involved in arranging two musical and dance events by reference to the identical mark which were performed in Sydney and Melbourne prior to filing of the trade mark application.

 The ownership ground was upheld for some of the applied for services and the delegate considered it was inappropriate to amend the specification; so the application was refused in its entirety.

Melbourne Bone and Joint Clinic Pty Ltd [2021] ATMO 121 (14 October 2021)

The applicant was unable to overcome a distinctiveness objection raised during examination of its application for trademark registration of Melbourne Bone and Joint Clinic filed on 12 March 2020 for various medical related services in classes 35 and 44.

The delegate considered the applied for mark had no inherent adaptation to distinguish and s41(3) was applied. The applicant relied on evidence of use since October 2014, but that evidence was insufficient to establish the acquisition of factual distinctiveness. While there was some use of the plain words, the evidence also disclosed use of these words with a graphic element.

One Zero Pty Limited v PLC Automation Pty Ltd & Redland Pharmaceuticals Pty Ltd [2021] ATMO 122 (14 October 2021)

Unsuccessful opposition by One Zero to trademark registration of Rehydraid filed on 15 April 2019 for oral electrolytes in class 5.

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

Since the opponent did not file any evidence, only the s44 ground could be considered and reliance was placed on its prior registrations for REHYDR8 Logo and REHYDR8 Total Hydration Therapy covering similar goods.

The delegate did not consider the applied for mark to be substantially identical with or deceptively similar to either of the opponent’s registered marks and concluded : “The descriptive nature of the REHYDR- element of REHYDRAID and REHYDR8 and the evocation in both words of the word ‘rehydrate’ in my view renders confusion unlikely, notwithstanding the phonetic similarity of the two words”.

Tama Group [2021] ATMO 123 (15 October 2021)

The applicant was successful in overcoming a distinctiveness objection raised during examination of its application filed on 19 July 2019 for trade mark registration of the colour yellow applied to plastic films and sheeting for wrapping bales of cotton and other agricultural crops as shown below in class 16.

The delegate considered the applied for mark had no inherent adaptation to distinguish and s41(3) was applied. There was a variety of coloured wrap products in the market and a competitive need for manufacturers to use and access the full spectrum of colours.

Nonetheless, the applicant relied on evidence of Australian use of its yellow coloured wrap product since March 2009. The delegate was satisfied that, due to the specialised marketplace in which the applicant operates, and by the exposure of the applied for mark through sales and promotion, it is capable of distinguishing the applicant’s cotton module wraps. However, the evidence did not support registration for plastic films and sheeting for wrapping bales of agricultural crops and the specification needed to be restricted accordingly.

David Edwards v Samuel James John Perry [2021] ATMO 124 (20 October 2021)

Unsuccessful opposition by David Edwards to trademark registration of THE GRADE CRICKETER filed on 4 February 2020 for various goods and services in classes 9, 16, 25 and 41.

The opponent relied on grounds of opposition under ss 43, 58 and 62A, but failed to establish any ground.

 The parties were involved in a loose business partnership and the opponent contended the applicant was not the sole owner of the applied for mark and his conduct in filing the trade mark application was in bad faith. However, the evidence was insufficient to sustain this, being in mind the opponent carried the onus proof and a finding of confusion over who owned the mark is not enough.

The s43 ground failed because the evidence did not establish notoriety of the applied for mark connoting some sponsorship or association with the opponent.

The s62A bad faith ground also failed and, in dismissing this ground, the delegate noted the applicant notified the opponent that he had filed the trade mark application and voluntarily exposed himself to a potential opposition. Such conduct was at odds with a party acting in bad faith.

PopSockets LLC [2021] ATMO 125 (26 October 2021)

The applicant was unable to overcome distinctiveness objections raised during examination of its applications filed on 19 July 2019 to register 2 shape marks.

The applications were for shapes of hand grips, stands and mounts for mobile electronic devices in class 9 which include an accordion-like conical feature enabling them to be collapsed and expanded.

There were corresponding US trade mark registrations and these products were first released in the US in November 2013 and in Australia in 2017.

These products were often described as a “knob” and the delegate seized upon this in concluding that the ordinary signification of the applied for marks is a functional knob shaped grip which is also suitable for use as a stand or mount.

The delegate considered they fell under s41(4) as having a small level of inherent adaptation to distinguish, but not to a sufficient extent to qualify for registration. The delegate then went on to consider the evidence of use and considered the applied for marks were not being used ‘as a trade mark’ as opposed to being used merely as the shape of the goods and the applicant does not promote or emphasise the shape of the products as being a trade mark in its own right. Rather, the various PopGrip, Popmount and other POP formative marks used by the applicant serve to distinguish its products. The delegate concluded that “consumers would consider the shape constituting the Trade Marks to be simply one of a number of different types of grip/stands sold under various brands, rather than being a badge of origin in its own right.”

PopSockets LLC [2021] ATMO 126 (26 October 2021)

The applicant’s trade mark applications for variants of the shape of its PopGrip grip, stands and mounts were also rejected for insufficient distinctiveness.

Clive Wilson v Richard Gower [2021] ATMO 127 (26 October 2021)

Unsuccessful opposition by Wilson to an application for removal of his registration for the trade mark RACEY alleging no good faith use in the relevant 3 years period ending 26 January 2020.

The registration dates from 23 May 2003 and covered various CD’s and cassettes in class 9 and entertainment services in class 41.

This is part of a dispute involving the UK band called RACEY of which the parties were original members. The original band split up in the mid 1980’s, but reformed in the early 1990’s; although Gower was not part of this reformed band.

There were sporadic, preliminary discussions regarding Australian tours, particularly in 2017, but that did not eventuate. There was no evidence of use of RACEY as a trade mark in Australia in the relevant three year period.

There were no obstacles to use of this mark and the delegate was not prepared to exercise discretion; so directed the RACEY mark to be removed from the Register.

No Fear International Limited v Lorna Jane Pty Ltd [2021] ATMO 128 (26 October 2021)

Unsuccessful opposition by No Fear International to an application for removal of its registration for the trade mark FEARLESS alleging no good faith use in the relevant 3 years period ending 23 June 2019.

The registration dates from 3 May 1995 and covered various apparel in class 25.

The opponent relied on website archive material from 2016 on a UK website showing use of FEARLESS ILLUSTRATION for various apparel items, but this was not directed to Australian consumers. There was also archived materials from an Australian website in 2017 showing use of FEARLESS ILLUSTRATION for apparel, but there was nothing to connect this with the opponent.

The delegate was not prepared to exercise discretion and directed the FEARLESS mark to be removed from the Register.

Schubert & Schubert LLC v Fur Hairdressing Pty Ltd [2021] ATMO 129 (28 October 2021)

Partly successful oppositions by Schubert to trademark registration of FUR (Stylised) and Fur Hairdressing filed on 21 November 2018 and 9 January 2019 for hair care related goods and services in classes 3 and 44. The class 3 specifications also included perfumery and the class 44 specification included make-up services.

The opponent prevailed under the s44 ground based on its prior trade mark application for FUR covering various class 3 goods.

The applicant carried on a hairdressing business in Melbourne under the Fur Hairdressing mark from 1996 and also offered FUR, FUR HAIR and FUR HAIRDRESSING branded products from its salon. The FUR (Stylised) mark was used from August 2009.

The opponent used its FUR mark in Australia from July 2017.

The delegate agreed with the opponent that the applied for marks were deceptively similar to the opponent’s FUR mark and covered similar goods and closely related services. However, the applicant’s evidence supported prior continuous use for hairdressing and styling services as well as shampoos and conditioners, so s44(4) was applicable for these goods and services. However, the delegate directed the specifications be restricted by deleting claims to unused goods and services.

The opponent also relied on grounds under s42(b) and s60 based on the Australian reputation of its FUR mark, but the delegate was not satisfied the evidence supported the requisite reputation and so these grounds failed.