Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – April 2014

Tchen Kil Tchun [2014] ATMO 28 (2 April 2014)

An application to register the trade mark LANCASTER for leather goods in class 18 and belts in class 25 was refused following a hearing.

Since the application was filed on 29 March 2012, the now repealed s41 was applicable.

The examination objection was framed in terms of Lancaster being the name of several places including cities in England and the USA, as well as a common Australian surname.

The hearing officer outlined the populations and industries of the relevant place names. He was not satisfied that LANCASTER is sufficiently inherently adapted to distinguish the applicant’s goods. The applicant did not provide any evidence or suggest any basis as to why it would be unreasonable to suppose that such goods might in the future be produced in any of the places named Lancaster.

The presumption of registrability was discussed and the hearing officer noted that it has no part to play under the former provisions of s41(5) or s41(6) which require the applicant to ‘satisfy’ the Registrar or ‘establish’ that the relevant criteria are met on the balance of probabilities.

The applicant filed some brief evidence of overseas use and registration of LANCASTER in various stylised forms, but the hearing officer did not place any significant weight on this evidence.

Given the geographical significance of the word Lancaster, the examination objection on this basis was appropriate and it was not necessary for the hearing officer to also consider its surname significance.

 

Hasbro, Inc v Mogens Rud Svendsen [2014] ATMO 29 (4 April 2014)

Successful opposition by Hasbro to registration of the Qludo logo trade mark shown below for a very broad range of goods in classes 9 and 25.

Qludo logo

The application was an International Registration designating Australia and originally also included class 28 goods, but Hasbro was successful in cancelling the underlying Danish registration and the class 28 goods were deleted from the Australian application before the opposition was heard.

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

The opposition was successful under the s44 ground with the hearing officer finding the Qludo logo mark was deceptively similar to Hasbro’s earlier registrations for its CLEUDO trade mark which covered the same or similar goods.

The hearing officer referred to cases on aural similarity, particularly the Federal Court decisions in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 and Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1 in finding that the Qludo logo mark ”is on the face of it phonetically identical to the CLEUDO mark and I do not think that the stylization of the Opposed Mark or the different initial letters of the parties’ marks are sufficient to significantly reduce the risk of confusion amongst potential consumers”.

 

Domain Shield Pty Ltd [2014] ATMO 30 (7 April 2014)

An application to register the trade mark DOMAIN SHIELD for various information, discount and retail services in class 35 and domain name registration services in class 42 was refused following a hearing.

The examination objection was framed in terms of the expression ‘domain shield’ being commonly used to refer to a product that conceals or shields the personal details of a registrant.

Since the application was filed on 24 August 2012, the now repealed s41 was applicable.

The hearing officer considered the examiner’s research reinforced that the expression ‘domain shield’ does have a technical meaning in relation to some of the services covered by the application. It is used by major Internet companies in the United Kingdom, South Africa and the USA as a part of the provision of domain name registry services. It is not relevant whether this technical meaning is unknown to Australians, or whether this facility is presently allowed in Australia. Rather it is more relevant whether the goods or services are likely to be imported into Australia. Also Australian domain name registrars may also register within domains other than the .au domain.

Indeed, the hearing officer considered the expression ‘domain shield’ lacked any inherent adaptation to distinguish and so s41(6) was applicable and the applicant could not show any commercial use prior to the 24 August 2012 filing date.

Further, the exclusion from the application of services pertaining to the technical meaning of ‘domain shield’ was not available because the applied for trade mark would then be completely misdescriptive of domain name services where the service of masking the identities of registrants is not available. At the very least use of the applied for trade mark for services which do not mask identities would be confusing and objectionable under s43.

 

Sanofi-Aventis Healthcare Pty Ltd v Russian Federation [2014] ATMO 32 (17 April 2014)

Successful opposition by Sanofi to registration on the trade mark shown below for various nutritional supplements in class 5, milk products in class 29 and yeast in class 30.

Micro GEN logo

The application carried an endorsement that the translation of the Russian word appearing in the trade mark is MICROGEN.

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

The opposition was successful on the s44 ground based on the applied for mark being deceptively similar to Sanofi’s prior registations for MICRO-GENICS and MICROGENICS as well as other composite marks containing MICRO GENICS in class 5 which covered the same or similar goods.

MICRO genics logo

The hearing officer accepted Sanofi’s submissions that the goods claimed in class 5 were the same as those covered by Sanofi’s class 5 registrations, while the goods claimed in classes 29 and 30 were similar to these class 5 goods.

On the deceptively similar issue, the hearing officer found that ”the opposed trade mark resembles each one of the opponent’s trade marks to the extent that it is likely to cause confusion. The registrations are all for trade marks, whether they include a device component or not, which primarily feature the elements “MICRO” and either “GENICS” or “genics”. In my estimation, ordinary people would regard and pronounce all of those trade marks as the single expression, “MICROGENICS”.”

The hearing officer observed the applied for mark “has two alphabetical components, sharing a common device element. The Romanized iteration consists of the terms “Micro” and “GEN”. I consider that ordinary persons of reasonable intelligence would regard and pronounce the Romanized part of the trade mark as “MICROGEN”. My reasoning rests partly on the fact that the device element would, within the semantic context of the whole, be perceived as a partial double helix DNA strand and not as the letters “XX”. That understanding of the trademark would cause an ordinary person to likely regard the term “GEN” as a shortening of the word “genetics” and so be more likely to pronounce the separated elements as the single term “MICROGEN” and give no linguistic role to the device element.” Also, “people without knowledge of the Cyrillic alphabet would be unlikely to regard the Cyrillic component as a separate identifying and distinguishing part of the trade mark and would identify and pronounce the trade mark in English as “MICROGEN” according to the logic already outlined. To the extent those same people thought about the trade mark in any greater depth they might see the common device element and reason that the Cyrillic letters amounted to the same thing (as it does, according to the endorsement).”

 

CSR Limited v XChina South Locomotive & Rolling Stock Corporation [2014] ATMO 33 (29 April 2014)

Successful oppositions by CSR to applications for removal of its registrations for CSR and CSR DRIVEWAY SOLUTIONS and CSR DRIVEWAY SPECIALISTS for various installation and other services in class 37 alleging non use during the 3 year period ending on 3 March 2012.

CSR’s evidence outlined the history of its business operations in the sugar industry from 1855 up until around 2009 when a strategic decision was made to focus on its building products business which had been running since the 1930’s.

During the relevant 3 year period, CSR manufactured and sold various building materials and provided services such as tile roofing, insulation installation, safety platform installation, steel roofing installation as well as installation of lightweight cement building blocks, panels and acoustic barriers. It had also built a display house in Schofields, NSW to showcase its products and services.

The applicant for removal was seeking to restrict CSR’s registrations to services associated with the production of building materials, construction materials, timber products and sugar, and to exclude such services relating to vehicles, locomotives, trains, rolling stock, railway infrastructure or related parts fittings and accessories.

The hearing officer considered ‘railway infrastructure’ must be construed broadly to include railway buildings and structures and hence the application to restrict the CSR trade mark registration was defeated by virtue of CSR having provided its various installation services.

CSR conceded that it had not used the CSR DRIVEWAY SOLUTIONS and CSR DRIVEWAY SPECIALISTS trade marks during the relevant 3 year period, but argued that its use of the CSR mark should also be regarded as sufficient to constitute use of these other combination word marks by relying on s7(1) which provides that use of a trade mark is established if there has been use of the trade mark with additions or alterations that do not substantially affect its identity. The hearing officer accepted this argument and thought it would have been appropriate to restrict these registrations to the various types of installation services provided under the CSR mark. However, the amended specifications would still be wider than those sought by the applicant for removal and would include such installation services relating to railway infrastructure.

In any event, the hearing officer was prepared to exercise discretion in favour of CSR and retain its trade mark registrations primarily due to the significant reputation of the CSR trade mark.

 

MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 (30 April 2014)

This case concerns a decision to refuse an application by Caprice for an extension of time to file evidence in reply to its opposition to an application for removal of its MATERIAL GIRL trade mark registration on the ground of non use.

The application for removal was advertised on 29 March 2012. A notice of opposition was filed on 29 June 2012. The opponent filed its evidence in support on 10 October 2012 after obtaining a 1 month extension. The applicant for removal obtained extensions totalling 6 months and completed its evidence in answer on 11 July 2013.

Regulations imposing stricter requirements for extensions came into force on 15 April 2013 and hence Caprice had to comply with these requirements for its evidence in reply.

Caprice filed part of its evidence in reply in time on 14 November 2013 and requested a 1 month extension to complete this evidence. It subsequently filed some additional evidence on 27 November 2013. However, on 29 November 2013, IP Australia issued a notice of intention to refuse the extension and allowed Caprice 14 days to file further reasons in support of its extension. Caprice filed the balance of its evidence in reply on 3 December 2013 and also filed further reasons in support of the extension on 4 December 2013.

IP Australia was prepared to allow the extension, but the applicant for removal objected to the extension and applied for a hearing.

Regulation 9.18 requires a party seeking an extension to satisfy the Registrar that it has (a) made all reasonable efforts to comply with all relevant filing requirements and despite acting promptly and diligently at all times to ensure the filing of the evidence within that period, is unable to do so; or (b) there are exceptional circumstances that justify the extension.

Since this is the first decision on extensions before the Trade Marks Office, the hearing officer referred with approval to the Patent Office decisions in McCarthy v TRED Design Pty Ltd [2013] APO 57 (11 November 2013) and Merial Limited v Novartis [2013] APO 65 (5 December 2013).

Caprice argued that it was disadvantaged by this new Regulation coming into effect between the evidence stages and a sale of the business which occurred in July 2013. However, the hearing officer was not satisfied these were exceptional circumstances.

The hearing officer also considered that Caprice had not acted promptly and diligently at all times. She was critical of the initial reasons given which did not sufficiently explain what occurred after the removal applicant’s evidence in answer was filed and prior to 13 November 2013. The further reasons given by Caprice were a more comprehensive explanation of the events and circumstances, but the hearing officer was still not satisfied.

The hearing officer refused the extension, but seemingly left the door open for Caprice to apply for leave to file further evidence (which was an option available to it because the opposition commenced before the stricter evidence regime came into effect on 15 April 2013).