Fairmont Hotel Management L.P. v Schwartz Family Co. Pty Limited.  ATMO 69 (6 August 2014)
Successful opposition by Fairmont Hotel Management to registration of the trade mark FAIRMONT for accommodation as well as food and drink services in class 43.
The trade mark application was filed by Schwartz on 13 December 2010 just before it completed the purchase of the business associated with the Fairmont Resort at Leura in the Blue Mountains which had been trading since August 1988 under various names including Peppers Fairmont Resort from 1999 and York Fairmont from 2007 until the sale to Schwartz. This application was accepted with a s44(4) endorsement indicating reliance on prior continuous use.
The opponent operates various hotels under the FAIRMONT trade mark in the USA and other countries. It does not have any hotel in Australia, but promoted its overseas hotels in Australia and took reservations for these hotels from Australia since 1991. It operated a sales office in Sydney from 2004. It also owned registrations for various FAIRMONT trade marks covering relevant services with the earliest dating from November 1990.
Much of the decision concerned the opponent’s Australian reputation and the hearing officer noted that the s60 reputation ground of opposition operates independently of the honest concurrent use and prior continuous use provisions under s44(3) and S44(4). Reference was made to McCormick & Co Inc v McCormick  FCA 1335.
There were some instances of confusion by travel agents and an events organiser. There was also an extract from a book indicating the FAIRMONT RESORT name was initially chosen to evoke or call to mind the opponent’s first FAIRMONT hotel in San Francisco.
Rather surprisingly, there was little discussion of the business operations of the Fairmont Resort in Leura since 1988 by the various owners of that business and the impact of that activity on the likelihood of confusion issue.
In any event, the hearing officer was satisfied the opponent had a sufficient Australian reputation as at October 2010 to engage the s60 ground and went on to find that, given the growth and scale of this reputation, “a high likelihood of deception or confusion from the concurrent use of the parties’ trade marks was and is inevitable”.
This case highlights the risks in delaying trade mark registration. Various entities connected with the Fairmont Resort at Leura filed trade mark applications in 1999 and 2007 but they did not proceed. If an application had been filed when this resort opened in 1988, this problem may have been avoided.
MCD Asia Pacific LLC v Coffee Cartel Pty Lt  ATMO 70 (8 August 2014)
Successful opposition by MCD Asia Pacific to registration of the trade mark McSlider for meat food products in class 29.
This case raised similar issues discussed in MCD Asia Pacific LLC v Hoseyin Dogon  ATMO 52 (12 June 2014) where registration of MCKebabs was refused.
The term ‘slider’ is defined as a small hamburger or any small sandwich served on a slider roll.
MCD’s evidence outlined the reputation of McDonald’s restaurants which had been trading in the USA since 1948 and in Australia since 1971, including Australian McCAFE outlets since 1993. It included use of a family of registered and unregistered trade marks with the prefix ‘Mc’ followed by the name of a food.
The applicant’s evidence was a declaration by Ms Johnston that McSlider was chosen as a fun reference to her Uncle Gordon and the eponymous slider which she wishes to serve at her chain of cafes.
In earlier decisions, McDonald’s had successfully opposed registration of McSalad, McFresh, McChina and Mc Coffee, but failed in in opposition to McBrat.
The hearing officer upheld the opposition under the s60 reputation ground and noted:
There are a number of ‘McSurname’ trade marks (such as McCormick, McVitie, McAlpin’s or McCain) registered in Classes 29-33 (those associated with food and drink); however, the Opponent has the only registrations (and, more importantly, reputation through use) of the Mc[Food] trade marks where those Mc[Food] trade marks are not the name of a person. The Opponent’s Mc[Food] trade marks are thus a family of trade marks.
Further, I agree with Ms Johnston’s submission that the Opponent cannot claim rights in all ‘McCoinages’. However, that is not the issue that I must consider: the question is whether the use of the Trade Mark by the Applicant or a licensee to the extent available within the postulated registration is likely to confuse or deceive.
A ‘slider’ is a ‘fast food’; it is by definition a hamburger which is a part of the Opponent’s core business. I consider that it is inevitable that the public would, because of the reputation of the Opponent’s Mc[Food] trade marks, its pre-existing hamburger business and its well-known habit of making further ‘McCoinages’, immediately associate the coinage ‘McSlider’ with the Opponent and that this association would be likely to give rise to confusion.
Sleepcraft Distributors Pty Ltd v Fisi Fibre Sintetiche  ATMO 71 (18 August 2014)
Unsuccessful opposition by Sleepcraft to registration of the trade mark THERMOSOFT for various bedding, raw textiles, padding materials and apparel in classes 20, 22 and 25.
The applicant did not file any evidence, but relied on written submissions by its attorneys.
The opponent relied on use and registration of its THERMALOFT trade mark for pillows, quilts and mattress protectors, as well as its THERMAX trade mark for filling for bedding products.
Under the s44 ground, the hearing officer was prepared to accept that the pillows, quilts and other finished bedding products covered by the opponent’s THERMALOFT trade mark registration were similar to the mattresses, pillows and cushions in class 20 as well as padding materials in class 22 covered by the applicant’s THERMASOFT trade mark. However, she did not consider these marks were deceptively similar and noted:
THERM relates to heat and prefixes such as THERMA and THERMO are commonly used in trade marks in respect of the goods in question here (there are more than 200 entries in the relevant classes of the trade mark database “ATMOSS” which incorporate one or other of these prefixes). Accordingly, for the purposes of comparison less attention is likely to be paid to prefixes that are common to the trade.
Additionally, LOFT and SOFT are both known English words with different meanings. In the context of pillows, quilts, filling and padding, LOFT refers to the height or thickness of such goods when laying flat – they may be “high loft” or “low loft” or, as a further example, some packaging of the Opponent’s goods displays the words “superior loft – high resilience”. SOFT relates to the quality of being yielding and pliable, and in the context of these goods is generally an agreeable quality which many traders wish to extol.
Therefore, on the one hand significant aural similarity exists between the trade marks (and to a lesser degree visual similarity). On the other hand the trade marks convey or allude to somewhat different things, albeit they are both comprised of elements which have some level of descriptive meaning. In my estimation it is a finely balanced comparison that is before me, with factors that both support and weigh against a finding of deceptive similarity. In this case I consider that the impression left by the difference in meaning outweighs the aural similarity of the trade marks. I bear in mind that words may sound the same or similar, yet in the context of the goods or services to which they are applied leave separate and distinct impressions. Additionally, variations which might not sufficiently differentiate invented words with no comprehensible meaning are likely to have greater impact in differentiating words with familiar elements that do convey meaning.
Under the s60 ground, the hearing officer considered the Australian reputation of the opponent’s THERMAX and THERMALOFT trade marks was insufficient to engage this ground, noting:
I will deal with the THERMAX trade mark first. The evidence includes only few instances of it in use: upon the packaging of Capt’n Snooze branded goods and in a brochure for the Capt’n Snooze Essentials Collection of quilts, pillows and their respective protectors. Figures relating to sales and promotion, from which reputation might be inferred, are not available for the THERMAX brand. Reputation must be established, it cannot be assumed. I am not prepared to infer reputation on the basis of the few examples of THERMAX in use, albeit that they are in use upon the goods sold through a major retailer. Additionally, given that THERM is a common prefix for trade marks there is little basis to infer that THERM[_____] marks per se, even in respect of the more specialised goods “padding materials”, are likely to be significantly associated with the Opponent.
In respect of the THERMALOFT trade mark, the Opponent points to its estimated 6% market share and pre-priority date sales and advertising figures. I note also that THERMALOFT branded goods are sold in Target stores and were for a time sold in Myer stores.
Here I consider the factor that most supports the potential existence of a reputation is the trade channels through which THERMALOFT branded goods are supplied, being through Target stores. Target is a major retailer in Australia, usually selling own-branded goods but also those of other traders. At the same time, Target stores appear to be the only channel though which the THERMALOFT branded goods is sold and in at least one example the packaging of the goods prominently displays the TARGET brand, such that the effect of the Opponent’s trade mark is diminished by the presence of the prominent TARGET trade mark.
Additionally, there are only two years of pre-priority date sales figures and whilst they are not insignificant they are not particularly high. It is not clear to me how the 6% market share figure was arrived at or whether it includes all domestic and commercial sectors of the market – if the 2010 or 2011 sales represented 6% of the total market for pillows, quilts and mattress protectors then the market would be quite small. The advertising expenditure is significant, although as with the trade channels, it appears that THERMALOFT goods are advertised only in TARGET catalogues.
…I am not satisfied that the THERMALOFT trade mark is recognised by the public generally nor that it has the requisite reputation. Accordingly I am not satisfied that the use of THERMOSOFT will cause confusion or deception and the ground under section 60 is not established. I note further that in the event I had been satisfied the requisite reputation existed, I would not be satisfied that it would be the cause of confusion or deception because of the dissimilarity described in relation to the section 44 ground.
The opponent also filed evidence of search results pointing to a lack of any commercial use of the applied for THERMOSOFT trade mark, but that evidence was insufficient to show a lack of intention to use this mark and shift the onus on to the applicant.
Enagic Australia Pty Ltd and Enagic Co., Ltd v Horizons (Asia) Pty Ltd  ATMO 72 (18 August 2014)
Unsuccessful opposition by Enagic to registration of the trade mark KANGEN for a broad range of goods including purifiers in class 11 and water and other beverages in class 32.
The s58 ownership ground of opposition failed because the hearing officer was not satisfied the opponents’ evidence demonstrated use of the KANGEN WATER trade mark in Australia before the relevant filing date of 10 January 2009; although the evidence did show use in other countries. The hearing officer noted that use on a website originating overseas is not use in Australia unless there is evidence that it is targeting the Australian market.
The s60 reputation ground of opposition also failed because the evidence of the opponents did not establish any relevant direct reputation or spillover reputation at the relevant date. Indeed, this evidence did not include any sales or advertising figures in Australia or overseas.
The opponents also relied on the s62A bad faith ground, but the hearing officer considered that “at most, I have before me a possible inference of bad faith which has been (at least partially) explained by the Applicant. In the end, I am not satisfied on the Opponents arguments and evidence that the Applicant’s decision to apply to register the Trade Mark was one of “an unscrupulous, underhand or unconscientious character”. The onus of bad faith rests on the Opponents and I find in this particular case, the onus of proof has not been discharged. On the balance of probabilities, I find that the Trade Mark was not filed in bad faith.”
WADREF Humified Compost Pty Ltd v Collison & Co.  ATMO 73 (18 August 2014)
Successful opposition by WADREF to an application for removal of its trade mark shown below and registered for compost in class 1, alleging no intention to use and no actual use at any time from 1 October 2011 to 29 March 2013.
The removal application was filed by Collison & Co on behalf of its client, Daly Pty Ltd.
WADREF’s evidence included details of its domain name humuscompost.com.au, screenshots of its Facebook and website pages, photographs of promotional stalls and an online advertisement from a third party website.
The Hearing officer pointed out that use of the words HUMUS COMPOST would not constitute use of the registered composite mark and noted that some of the evidence was inconclusive and after the 29 March 2013. Nonetheless, he was satisfied that, in totality, this evidence established good faith use of the registered mark before this date and, at the very least, established an intention to use this mark as at the 1 October 2011 filing date as inferred from WADREF’s business activities after this date.
The removal applicant sought to establish that it had used HUMUS COMPOST before 1 October 2011 and that a representative of WADREF had earlier business dealings with the removal applicant. This created an inference that WADREF did not adopt its registered mark in good faith. However, the hearing officer was not convinced by this.
Good faith in the context of non use removal proceedings has been construed by the courts as requiring no more than a genuine intent to use the trade mark for commercial purposes, and does not involve any element of honesty or subjective good intentions. Consequently, a non use removal application is not the appropriate proceeding to determine whether the trade mark application was made in bad faith under s62A. That is a ground available in an opposition to registration and in a cancellation application.
Facebook, Inc. v Northsword Pty Ltd.  ATMO 74 (18 August 2014)
Successful opposition by Facebook to registration of the trade mark FRIENDBOOK for various social introduction, escort agency and related services in class 45.
Northsword did not file any evidence but did file written submissions.
The opponent’s evidence was understandably directed to the Australian reputation of its well known FACEBOOK trade mark in the online social networking field.
The s60 ground of opposition was established and the hearing officer commented that “given the reputation evidenced by the opponent in its FACEBOOK trade mark both overseas and in Australia, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the FACEBOOK trade mark and the applicant’s FRIENDBOOK trade mark, particularly when these trade marks are applied to the same social networking services”.
PUMA SE v Bangkok Rubber Public Company Limited  ATMO 75 (19 August 2014)
Unsuccessful opposition by PUMA to registration of the trade mark shown below for apparel in class 25.
Under the s44 ground of opposition, the opponent relied on various prior registrations for its wildcat design by itself and in combination with the word PUMA as shown below:
It argued that its wildcat design is so similar to the wildcat head portion of the applied for mark that consumers are likely to believe the goods branded with the applicant’s composite mark are somehow related to the opponent’s PUMA branded goods. However the hearing officer was not convinced and considered “the word PAN is unlikely to be mistaken for the distinctive word PUMA and the respective wildcat devices are visually quite different. When the trade marks are considered as wholes, the word PAN sufficiently differentiates the applicant’s wildcat head device trade mark from the opponent’s PUMA trade marks”.
Under the s60 ground, the opponent relied on the significant Australian reputation of its wildcat design mark, but the hearing officer was not satisfied that it is likely for the average consumer to become confused and be caused to wonder whether there was a connection between the respective goods, particularly given the lack of similarity between the respective trade marks.
The opponent also relied on the s59 ground of opposition and argued that the applicant intended to use the wildcat device by itself and not in the form as applied for, but the evidence fell short of making out a persuasive case and was insufficient to shift the onus on to the applicant.
The S62A bad faith ground also failed. At best, the opponent’s evidence might cast a possible inference of bad faith, but was insufficient to make out this very serious allegation which requires proof of conduct of an unscrupulous, underhand or unconscientious character.
Accolade Wines Australia Ltd, Pernod Ricard Winemakers Pty Ltd, Treasury Wine Estates Ltd and Australian Vintage Limited v Delegat’s Wine Estate Limited  ATMO 76 (22 August 2014)
Successful opposition by the joint opponents to registration by Delegat’s of the trade mark shown below for wine in class 33.
The opponents argued this bottle design lacked distinctiveness under s41 and the applicant did not intend to use it as a trade mark in this form (because the wine label, in use, included the OYSTER BAY brand name).
The evidence was substantial and included declarations from persons in the wine industry and marketing experts as well as survey evidence.
Since the trade mark application was filed on 26 February 2010, prior to the Raising the Bar amendments effective from 15 April 2013, the opposition was decided with regard to s41 as it stood at that time.
The hearing officer was satisfied the opponents’ evidence established that the burgundy bottle shape and the use of bands and oval components on a rectangular label are common to the wine industry in Australia such that the applied for trade mark has limited inherent adaptation to distinguish. The evidence of use relied upon by the applicant showed use with additional branding elements including the word mark OYSTER BAY, a varietal name, an illustration of a bay, the region name Marlborough, the country name New Zealand and a tagline as shown below:
The applicant relied on case law supporting the proposition that reputation may reside in get-up as distinct from a trade name used with this get-up, and that labelling may bear more than one trade mark. However, the hearing officer was not convinced and noted that the evidence did not show the applied for bottle design functioning as a trade mark in its own right. Rather, it was a ‘limping mark’ always accompanied by other branding elements. Consequently, the evidence was insufficient to satisfy the hearing officer that the applied for bottle design is capable of distinguishing the applicant’s goods from those of others in the wine industry.
Industrial Knitted Products Pty Ltd  ATMO 77 (25 August 2014)
The applicant challenged a decision to revoke acceptance of its applications to register EXCELNET in plain word and stylised forms as shown below for netting and packaging materials in class 22.
The hearing officer considered it was correct to revoke acceptance due to an error made by the examiner in failing to raise an objection based on an earlier application for the trade mark shown below covering netting and rubber in class 17.
The issue was somewhat complicated due to this earlier mark being amended on the basis of correcting a clerical error.
The power to revoke acceptance is in s38 which provides:
Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
The hearing officer considered the earlier mark (both in the form filed and after its amendment) to be deceptively similar to the applied for marks and covers netting in class 17 which are similar goods. Hence, the examiner’s failure to cite it as an objection was manifestly wrong and it is reasonable to revoke acceptance.
Bauer Consumer Media Ltd and Bauer Media Pty Ltd v Evergreen Television Pty Ltd.  ATMO 78 (25 August 2014)
Unsuccessful opposition by Bauer to registration of the trade mark Discover Downunder for production of television programs in class 41.
The trade mark application was filed on 9 October 2009.
In 2012, Bauer acquired the publishing business of ACP Magazines Pty Ltd (ACP) which, until that time, was part of the Nine Entertainment Co. group of companies including the television broadcaster Nine Network. Warren Parrot, the son of the sole director and shareholder of Evergreen, Colin Parrot was employed by ACP from 2000 to 2009. Bauer alleged that, since late 2004, it arranged for the production and promotion of a television series relating to caravanning and motorhome holidaying in Australia under the Discover Downunder trade mark which was devised by Warren Parrot in the course of his employment. ACP also operated a website at www.discoverdownunder.com.au since 2005.
The applicant countered this by asserting that Colin Parrot created this trade mark and the television series came from ideas he had formed in the late 1980s. In 2004, at the request of the applicant, Warren Parrot approached ACP with the concept for a television show but, since there was no interest, the applicant then approached the rival television broadcaster, Network Ten which in 2005 and 2006 broadcast two series of a television series under the trade mark. There were two agreements under which the applicant granted Network Ten a broadcast licence for these two series.
It was Bauer’s position that the initial approach to Network Ten were predicated on the basis that ACP would own all the rights to the television series including the Discover Downunder title, but there was no written agreement between ACP and the applicant or Network Ten to this effect. There were invoices from the applicant and payment consistent with commissioned television production services, but the applicant contended they were not relevant proof as to ownership of the trade mark.
On the s58 ownership ground of opposition, the hearing officer decided that Bauer failed to discharge their onus of establishing, on the balance of probabilities, that someone other than the applicant had a better ownership claim through first user of the same or substantially identical trade mark for the same kind of thing.
On the s60 reputation ground, Bauer’s evidence was insufficient to show that members of the public would associate the Discover Downunder trade mark with Bauer or that there is a real and tangible likelihood of confusion or deception created by the applicant’s use of this trade mark.
On the s59 intention to use ground, Bauer asserted that the applicant had, as early as mid 2009 and before filing the opposed trade mark applicant, decided to use WHAT’S UP DOWNUNDER for a television show. However, the hearing officer considered that the applicant’s earlier use of the Discover Downunder trade mark had a major influence on its intention as at the October 2009 filing date. He considered the WHAT’S UP DOWNUNDER trade mark was intended for a different type of product, albeit one with common subject matter. Consequently, this ground of opposition also failed.
On the s62A bad faith ground of opposition, Bauer contended that the applicant only filed the trade mark application after Warren Parrot’s employment with ACP was terminated and after a media announcement that ACP intended to continue the Discover Downunder television series with a new production partner. However, the hearing officer did not consider the applicant’s conduct fell below the standards of acceptable commercial behaviour and was satisfied it acted honestly. As a result, this ground of opposition failed.