Hamilton v Stark  FCCA 3309 (14 December 2015)
Unsuccessful appeal by Hamilton from a Registrar’s decision dismissing an opposition to trademark registration of ALKAVIVA filed on 6 June 2012 for water filtering apparatus in class 11.
The parties were competitors in the field of equipment for alkalising drinking water.
Before the Registrar, Hamilton had relied on grounds of opposition under s43 and s60 but, for the appeal, sought to add s44.
Emmett J considered the court does have jurisdiction to consider a new ground of opposition not raised before the Registrar because an appeal is a hearing do novo and a judge begins afresh and exercises any discretion exercised by the Registrar.
Under the s44 ground, Hamilton relied on prior trademark registrations for ALKAWAY, ALKAPOD and ALKASTREAM. However, Emmett J accepted Stark’s evidence that the ALKAVIVA trade mark evolved without any reference to Hamilton’s business or his trade marks. Her Honour also accepted that “alka” is an abbreviation of alkaline and is a term already in use in relation to alkalising products in Australia and elsewhere. As such, it is descriptive and non distinctive. Further, the suffix VIVA in the ALKAVIVA trade mark has no visual or aural similarity to the suffixes WAY, POD or STREAM in Hamilton’s prior registered marks and VIVA, being a Spanish word meaning “life”, does not have any conceptual similarity to these suffixes. Also, Hamilton’s prior marks are three syllables, whereas the ALKAVIVA mark is four syllables. Consequently, her Honour was not satisfied that the resemblance between the ALKAVIVA trade mark and any of Hamilton’s prior registered marks is such as to be likely to deceive or cause confusion.
Under the s60 ground, Hamilton relied on reputation derived from use by his business of ALKAWAY as a trading name and brand for a range of alkalising products since 2008 as well as use of other product brands having the prefix ALKA-. However Emmett J noted that reputation is more than merely prior use or prior sales. Rather, the applicant’s trade mark needs to be recognised to be “associated in the minds of the Australian public”. Her Honour was not satisfied the evidence showed that consumers associate the prefix ALKA- with the goods marketed by Hamilton’s business. Further, even if Hamilton’s trade marks have a reputation, her Honour was not satisfied that use of the ALKAVIVA trade mark would be likely to deceive or cause confusion.