Tobzac Investments Pty Ltd  ATMO 1 (11 January 2019)
An application for trademark registration of the stylised WEAVE mark shown below filed on 1 June 2017 for various furniture goods was refused.
The s44 ground was upheld
E&J Gallo Winery v Kristy Booth  ATMO 2 (14 January 2019)
Unsuccessful opposition by Gallo to trademark registration of APOTHECARY GIN filed on 17 May 2016 for spirits in class 33.
The opponent relied on grounds of opposition under s 42(b), 43, 44, 60 and 62A but failed to establish any ground.
Reliance was primarily on the opponent’s prior registrations for trade marks containing APOTHIC and Australian use since 2015 of its APOTHIC RED mark for wine. Much of the opponent’s evidence related to activity in other countries or was after the relevant 17 May 2016 filing date.
Under s44, the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to APOTHIC or any of the opponent’s other registered marks containing APOTHIC. The delegate concluded “the Apothic Trade Mark, whilst it might call the word “apothecary” to mind, is also very obviously distinct from that word. In my consideration, most people who are aware of the Apothic Trade Mark would view a trade mark consisting of, or containing, the word “apothecary” as being, or connoting, something different and as not indicating a connection between the parties or their goods in the course of trade. In other words, the ordinary person might notice a similarity stemming from the commonality of the “apoth” portions of the parties’ trade marks but would not be confused or deceived because of that.”
Under s60, the delegate considered the Australian reputation of the opponent’s APOTHIC RED mark to be modest or slight and with no spill-over reputation arising from its use in the USA or elsewhere. Further, confusion was unlikely given the differences in the respective marks. The delegate also referred to wine and gin being offered for sale in different areas of liquor retail stores as further reducing any risk of confusion.
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. However, given the delegate’s finding under s60, the s42(b) ground also failed.
Under s43, the opponent argued that, because the applied for mark contains the word GIN, it use for spirits other than gin would be likely to deceive or cause confusion. The delegate noted that under earlier legislation the Registrar would have required a claim to vary in the form “In use the description ‘gin’ within the trade mark is varied to accord with the application of the trade mark to other goods contained within the specification”. Further, the delegate concluded that “whilst the Trade Mark could be used in a confusing or deceptive manner, there is no evidence before me which suggests that it is likely that it would be used in this way and that the Applicant would not vary the use of the word “gin” in the application of the Trade Mark to other goods within its specification of goods as might be appropriate.”
Finally, under the s62A bad faith ground, the opponent argued that the applicant would have been aware of the opponent’s APOTHIC mark and adopted the APOTHECARY GIN mark to obtain a commercial benefit. The delegate was dismissive of this and observed “There are estimated to be about 2468 wineries in Australia. It would, in my view, be most unlikely that wine-makers in Australia would be aware of all of the trade marks used by other Australian vintners – let alone be aware of the trade mark of an imported wine with a slight reputation in Australia. This must be truer of a person who is not a wine-maker but is a distiller.”
Murray Goulburn Co-Operative Co. Limited v Biolife New Zealand Limited  ATMO 3 (15 January 2019)
Successful opposition by Murray Goulburn to trademark registration of ‘natrapure’ (stylised) filed on 19 August 2016 for various nutritional supplements in class 5 and dairy products in class 29.
The s44 ground was upheld with the delegate finding the applied for trade mark was deceptively similar to the opponent’s prior registered NATRA mark for similar goods.
Melissa Ann Rowe v Gerrit Ryan Wood and Sarah Wood  ATMO 4 (16 January 2019)
Unsuccessful opposition by Rowe to trademark registration of The Mindful Mum (stylised) filed on 12 April 2016 for various services in classes 41 and 45.
The opponent relied on grounds of opposition under ss 42(b), 58, 60 and 52A but did not file any evidence in support and so could not satisfy its onus of establishing any of these grounds.
USpa Corporation Pty Ltd v IS Dongseo Co., Ltd  ATMO 5 (16 January 2019)
Unsuccessful opposition by USpa to trademark registration of the Uspa composite mark shown below filed on 12 October 2016 for bidets in class 11 and retailing of goods in class 35
The s44 ground failed. The opponent relied on its prior registrations for the trade mark ‘uspa’ in class 3 and ‘uspa’ & Device in classes 3 and 44.
The delegate noted the applicant’s specification covered the retailing of goods generally which could include retailing of the class 3 goods covered by the opponent’s registered marks, but did not consider retailing services to be closely related to these goods.
The grounds of opposition under ss 42(b) and 60 also failed because the opponent did not file any evidence to support either of these grounds.
Prokit’s Industries Co., Ltd v Pro-Kit Pty Ltd  ATMO 6 (17 January 2019)
Unsuccessful opposition by Prokit’s to trade mark registration of Pro-Kit (stylised) filed on 28 August 2014 for tyre repair adhesives in class 1, radiator caps and filters for engines, vacuum cleaners and air compressors in class 7, flashlights and torches in class 11, tyre repair patches and other vehicle accessories in class 12, adhesive packaging tapes in class 16, adhesive tapes in class 17 and cable ties in class 20.
The s44 ground failed. The opponent relied on its prior registration for Pro’sKit (stylised) covering hand tools in class 8. However, the delegate did not consider any of the applied for goods to be similar to these class 8 goods.
The grounds of opposition under ss 42(b), 60 and 62(b) also failed because the opponent did not file any evidence to support these grounds.
Destination Tweed Inc v Jayne Henry  ATMO 7 (17 January 2019)
Unsuccessful opposition by Tweed to trademark registration of TASTE TWEED Logo filed on 12 February 2016 for various goods in class 29 and services in classes 41 and 43.
The grounds of opposition under ss 44, 60 and 62A failed because the opponent’s evidence did not establish any of these grounds.
John Georges v Bondi Water Pty Ltd  ATMO 8 (17 January 2019)
Unsuccessful opposition by Georges to trademark registration of the Bondi Water Logo mark shown below filed on 9 August 2016 for various water beverages in class 32.
The s44 ground failed because the delegate did not consider this mark to be deceptively similar to the opponent’s prior registered mark for Bondi Sparkling Logo shown below which covered similar class 32 goods.
The s60 ground also failed because the opponent did not file any evidence of reputation to support this ground.
Opus RV Pty Ltd v H Taylor & Son (Brokley) Limited  ATMO 9 (18 January 2019)
Successful opposition by Opus to an application for partial removal of its trademark registration for Aeroplus alleging non-use during the 3 year period ending on 2 April 2016.
The opponent’s evidence established use of the registered mark for various aerodynamic devices in the nature of wind deflectors for fitting to cars, vans and caravans to reduce drag and increase towing stability. The removal applicant was seeking to restrict this registration to such goods for land vehicles because it was interest in marine vehicles. However, the delegate considered wind deflectors for land vehicles and wind deflectors for boats were similar goods and it was appropriate to exercise discretion in favour of Opus and not restrict the specification of its registered mark.
Capital Safety Group EMEA and 3M Company v Classic Supplies Pty Ltd  ATMO 10 (22 January 2019)
Unsuccessful opposition to trademark registration of Protectaware filed on 3 December 2015 for various protective apparel and signs in class 9, apparel in class 25 and disposable clothing in class 26.
The opponent’s relied on their prior use and registration of the trade marks PROTECTOR and PROTECTA.
The PROTECTA registration covered various items of safety equipment such as cables and harnesses which the delegate considered were not similar goods to protective clothing and so the s44 ground based on that registered mark failed.
The PROTECTOR registration covered similar goods, but the delegate considered the applied for Protectaware trade mark was not deceptively similar to PROTECTOR, so the s44 ground based on that registration also failed.
The grounds of opposition based on ss 42(b), 58, 59, 60 and 62A also failed.