Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – April 2015

Apax Partners Midmarket v Apax Partners LLP [2015] ATMO 30 (2 April 2015)

Unsuccessful opposition by Apax Partners Midmarket to registration of the trade mark APAX for a range of venture capital and private equity related services in class 36.

The trade mark application was a divisional claiming priority from earlier applications, but the applicant withdrew the divisional claim, so the relevant filing date was 31 May 2010.

The opponent had a prior registration for the identical APAX trade dating from 30 December 1999 and covering various financial services in class 36 which was initially raised as an objection, but the applicant was able to overcome this by filing evidence of use and its trade mark application proceeded to acceptance under the ‘other circumstances’ provision with a s44(3)(b) endorsement.

The hearing officer’s decision essentially turned on whether the evidence was sufficient to make out a case for honest concurrent use. This evidence indicated the applicant was an equity advisory firm to fund managers and the hearing officer was satisfied the evidence supported the applicant’s contention that its business activities were known in Australia since the late 1990’s. While the opponent provides essentially the same services, the evidence of its Australian business activity was sketchy. There was no evidence of actual confusion.

The hearing officer noted that the ‘honest concurrent use’ provision requires a consideration of the actual use made by each party of the APAX trade mark. He was satisfied the applicant’s adoption of the APAX mark was ‘honest’ and, given the highly specific nature of the business of each party and the enormous monetary value of many of the transactions, the likelihood of confusion is relatively low. The hearing officer did not attribute much weight to the relative inconvenience aspect, but did agree that it would seriously inconvenience the applicant if it had to adopt a different mark for the Australian market.

 

Tunit (BVS Ltd) v Alpine Electronics, Inc. [2015] ATMO 31 (13 April 2015)

Unsuccessful opposition by Tunit to partial removal applications filed by Alpine alleging non use of the registered tunit word and logo marks for computer firmware and software during the three year period ending on 1 September 2013.

Alpine was seeking registration of its TUNEIT logo trade mark for “computer application software for mobile phones namely software for adjusting equalization settings for music” and had encountered Tunit’s registrations as objections because they had broad claims to computer firmware and software.

Tunit was represented at the hearing by its Managing Director, Mr Michael Bromley. Its evidence did not establish use of the registered trade marks during the relevant three year period, but it was apparent Tunit’s interest was in hardware and related software for improving the performance and efficiency of diesel engines. The evidence supported limited use before and after the relevant period.

The hearing officer considered it was appropriate to apply the Registrar’s discretion and allow Tunit’s trade marks to remain on the Register with limitations to computer firmware and software for performance and tuning equipment for diesel engines.

 

Aleem Pty Limited as trustee for The Mini-Tankers IP Trust. [2015] ATMO 33 (21 April 2015)

This matter involved the rarely used power of the Registrar to revoke a registered trade mark under s84A which was introduced in 2006. This power may only be exercised where notification is given with 12 months of registering the mark and the Registrar is satisfied the trade mark should not have been registered and it is reasonable to revoke the registration taking account of all the circumstances.

The hearing officer ultimately decided to not revoke Aleem’s registration for the word mark ‘Refuelling Solutions’ for various goods and services relating to fuels, oils and greases in classes 4, 35, 37 and 39 which was filed on 9 August 2011 and entered on the Register on 11 December 2013.

On 18 June 2014 the Registrar received a letter from WA Refuelling Solutions Pty Ltd seeking revocation of Aleem’s word mark registration as well as its composite mark registration shown below which was registered at the same time.

Refuelling Solutions Logo

Both of Aleem’s registrations carried s41(5) endorsements which indicates evidence was filed in support of registration.

On 18 July 2015 the Registrar wrote to Aleem, indicating that a third party communication had been received and notifying Aleem of the proposal to revoke the word mark registration (but not the composite mark registration). This notification indicated that the words “refuelling solutions” were devoid of any inherent adaptation to distinguish and the evidence filed by Aleem was insufficient to support registration under s41(6) and demonstrate factual distinctiveness through use prior to the 9 August 2011 filing date.

Aleem subsequently complied with the Registrar’s invitation to file submissions and further evidence, but that was insufficient to allow reconsideration of the proposal to revoke the word mark registration, so Aleem then applied for a hearing. Aleem’s evidence disclosed that its predecessor in interest introduced the concept of on-site direct to equipment supply of fuel to Australia in 1987 and the Refuelling Solutions name and trade mark had been used since then.

The hearing officer referred, with approval, to the earlier Bobart decision reported at [2010] ATMO 43 and noted that the power to revoke registration should be exercised with great caution. The initial decision to register the Refuelling Solutions word mark was made after Aleem filed supporting evidence of use and the absence of any opposition by any other party. The hearing officer considered the subsequent proposal to revoke registration reflected a mere change of opinion that s41(6) rather than s41(5) was more appropriate. There was no error (including error of judgment) or omission that led to the initial decision to register this trade mark. In light of this finding, it was not necessary for the hearing officer to also consider whether the proposed revocation was reasonable.

 

Conair Corporation v Xialei Yu [2015] ATMO 32 (22 April 2015)

Successful opposition by Conair to registration of the stylised trade mark Cuisinware shown below filed on 22 March 2013 for various kitchen machines and utensils in classes 7 and 21.

Cuisinware

Conair relied on its prior registrations for CUISINART and the Australian reputation derived from use of this mark in Australia since 2003 for a range of cookware, bakeware and kitchen utensils including food processors. In use, this trade mark was represented as shown below:

Cuisinart

The hearing officer was satisfied Conair’s evidence demonstrated its CUISINART trade mark had acquired a significant Australian reputation before filing of the Cuisinware application and there is a high likelihood that ordinary consumers would regard the Cuisinware trade mark as somehow connected with Conair.

The hearing officer also noted the similar font of the applied for Cuisinware trade mark with the manner in which Conair uses its CUISINART trade mark and had no hesitation in upholding the s60 reputation ground of opposition.

Although the hearing officer did not consider the s44 ground of opposition, it is implicit that he had reservations whether the applied for Cuisinware trade mark was deceptively similar to Conair’s registered CUISINART trade mark.

 

The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd [2015] ATMO 34 (30 April 2015)

Unsuccessful opposition by The BBQ Store to registration of the logo trade mark shown below filed on 5 November 2012 for barbeques in class 11.

BBQstore logo

The applicant’s evidence disclosed first use of THE BBQ STORE name and trade mark in May 2012 for retailing of barbeques and related equipment, with continuous use of the applied for logo trade mark since July 2012.

The opponent was incorporated on 17 December 2010 and created the logo trade mark shown below in February 2011. It subsequently applied to register this logo mark on 13 November 2012 in class 11 and that application is being blocked by the applied for mark.

BBQStore logo opponent

Its evidence disclosed use of this logo mark as well as this logo without the URL and the plain words The BBQ Store since February 2011

BBQ Store without URL

The s58 ownership ground failed because, even though the opponent could show earlier use, the hearing officer was not satisfied that any of the three versions of its The BBQ Store trade mark were substantially identical with the applied for logo mark, particularly given the non distinctive nature of the words The BBQ Store.

The s60 reputation ground also failed because the hearing officer was not satisfied that any of the opponent’s trade marks had acquired a requisite reputation as at 5 November 2012. The opponent’s business was relatively modest and the applicant used the ‘notice to produce’ procedure to obtain documents from the opponent’s business records which undermined the general promotional expense claims in the opponent’s evidence. The hearing officer commented that any deception or confusion arising from use of the applied for logo mark is more likely to be because both parties’ marks contain the descriptive words “The BBQ Store” rather than because of any significant reputation attributable to the opponent’s marks.

It is rather curious that this dispute concerned trade mark applications for goods in class 11 when the parties appear to be primarily involved with the retailing of these goods. The opponent operates the website at http://www.thebbqstore.com.au/ and has a physical store at Prestons, NSW. The applicant operates the website at http://www.thebarbequestore.com.au/ which went live on 25 August 2012 and has a physical store at St Leonards, NSW. The opponent filed a class 35 service mark application for its The BBQ Store logo (without the URL) on 20 January 2015 and that application has been accepted. The applicant filed its own service mark application in class 35 for its TheBBQstore logo on 13 February 2015 which is presumably being blocked. It is surprising that there is more than a 2 year gap between filing of the class 11 and class 35 trade mark applications and it remains to be seen how they will unfold.