Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – December 2013

Bickford’s Australia Pty Ltd v Tata Sons Limited [2013] ATMO 100 (3 December 2013)

Bickford’s successfully opposed registration of the trade mark TATA WATER PLUS for various printed materials in class 16 and non alcoholic beverages in class 32 and defended its WATERPLUS/WATER+ trade mark registration against an allegation of non use during the 3 year period ending on 13 January 2012.

The Hearing Officer noted that “a mark wholly contained within another will not necessarily lead to a conclusion of deceptive similarity. For example, additional words that change the meaning of the expression may lead to a conclusion that the marks are not deceptively similar (as in HEALTHPLUS vs INNER HEALTH PLUS), as might the inclusion of names the notoriety of which may be judicially noted (as in METRO vs WOOLWORTHS METRO). I bear in mind also that non-distinctive words might be discounted to a certain extent because they serve only a descriptive function (such as CHOC in CHILL vs CHOC CHILL or EASY in JEST v EASYJEST).” Applying these considerations, the Hearing Officer was satisfied the applied for TATA WATER PLUS trade mark was deceptively similar to Bickford’s registered series of marks for WATERPLUS/WATER+.

Significantly, the Hearing Officer was not prepared to apply the s44(3)(b) “other circumstances” provision in favour of Tata based on its filing of the non use removal application. Reference was made to the pending Federal Court appeal in Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No. 1) [2012] FCA 1184. The relevant date for assessing the opposition to registration was the filing date of the TATA WATER PLUS application, namely 29 April 2011 which preceded Tata’s removal application by almost two years and any removal order would not operate retrospectively.

With regard to the removal application, Bickford’s relied upon two tax invoices each for the sale of 12 cartons of “Water+ 12 Lemon” dated 22 June 2011 and 20 September 2011 which was within the relevant 3 year period. Despite Tata’s arguments to the contrary, the Hearing Officer was satisfied these invoices could be relied upon by Bickford’s to show genuine commercial use in good faith of its registered WATER+ trade mark to successfully rebut the allegation of non use.

 

Cash Converters Pty Ltd v Margo Chaille Webber [2013] ATMO 101 (10 December 2013)

Successful opposition by Cash Converters to registration of the trade mark shown below for various retail and wholesale services in class 35 and financial services in class 36.

cash eez logo 1452905

Cash Converters had previously been successful in an earlier opposition to registration of the identical mark for identical services reported on 28 May 2013 based on its registered CASHIES trade mark.

The Hearing Officer considered that estoppel by res judicata may apply to earlier administrative decisions made by the Registrar. However, in this later case, the Applicant additionally argued that the evidence submitted supported registration based on the “honest concurrent use” or “other circumstances” provisions under s44(3) of the Act.

The trade mark application in dispute here had a later filing date (10 October 2011 rather than 10 December 2009) and hence the Hearing Officer needed to assess whether the Applicant’s use of the applied for trade mark from around December 2009 until 10 October 2011 supported honest concurrent use. The Hearing Officer relied on Federal Court authority that only use before the filing date is relevant for honest concurrent use under s44(3)(a), but noted that the courts are less conclusive whether evidence of use occurring after the filing date can be taken into account for “other circumstances” under s44(3)(b).

The Hearing Officer considered that the Applicant’s use of the applied for mark after the earlier Registrar’s decision made on 3 May 2013 would not be “honest” and had some doubt whether the adoption and use of this mark was honest from a commercial standpoint. The Applicant was a former director of a franchisee of Cash Converters and had received a letter of demand from Cash Converters in December 2009 around the time the Applicant’s first store was opened; so it was clearly aware of Cash Converters’ rights in the CASHIES trade mark. Further the evidence of use relied upon by the Applicant was minimal and limited to a certain geographical area in South East Queensland. There were also indications the Applicant had adopted and registered an alternative trade mark, CASH EEZi.

On balance, the Hearing Officer considered the evidence did not permit registration under the “honest concurrent use” or “other circumstances” provisions.

 

Steven R Smith v Car2go GmbH [2013] ATMO 103 (13 December 2013)

Partly successful opposition to registration of the trade mark CAR2GO for a range of goods and services in classes 12, 25, 28, 35, 36, 38 and 41.

During examination, the CAR2GO application encountered objections based on Smith’s prior registrations for 1800 CAR 2 Go Logo and car2go in classes 35 and 39. The application was subsequently amended to delete the overlapping services and proceeded to acceptance.

Smith had operated a car rental business in Queensland since early 2008 under the CAR2Go trade mark and name. Trade mark applications for 1800 CAR 2 GO and car2go were filed in January and March 2008 and subsequently registered for transport and motor vehicle hire services in class 39 and promotion (advertising) of business in class 35.

The Applicant was a wholly owned subsidiary of Daimler AG and operated a pay as you go, car sharing business using Smart branded vehicles under the CAR2GO trade mark. This was initially trialled in Germany in October 2008 and subsequently rolled out in various European cities as well as the USA and Canada, but there had been no use of this in Australia.

The Opposition was upheld under the s44 ground with the Hearing Officer finding that the services covered by Smith’s trade mark registrations were similar to sales of used vehicles in class 35; insurance services, financial services, monetary affairs, lease purchase financing of vehicles in class 36; rental of car phones in class 38; education, training, entertainment in class 41; and closely related to vehicles and apparatus for locomotion on land, sea or by air in class 12; clothing, headgear, footwear in class 25; as well as games and toy and model vehicles in class 28.

The Hearing Officer adopted a rather liberal approach to the similar services/closely related goods issue and was seemingly influenced by the risk of confusion arising from the close similarity of the respective trade marks.

 

Bugatti GmbH v Bugatchi Uomo Apparel, Inc. [2013] ATMO 102 (17 December 2013)

Successful opposition to registration of the trade mark BUGATCHI UOMO for various clothing items in class 25.

The Hearing Officer considered he was bound by the earlier related Federal Court decision reported on 31 October 2013 where there was a finding that the applied for BUGATCHI UOMO trade mark was deceptively similar to BUGATTI already registered for clothing. Consequently, it was necessary to decide whether discretion could be exercised under the honest concurrent use and/or other circumstances provisions.

The Hearing was satisfied that the evidence disclosed concurrent Australian use of the respective trade marks since May 2010 and that the adoption of the BUGATCHI UOMO trade mark was honest. However, the BUGATCHI UOMO trade mark application was filed on 2 June 2010 and there was not sufficient evidence of concurrent trade mark use occurring in Australia before this filing date to apply the honest concurrent use provision. The Applicant asserted earlier Australian use from 1991, but there no evidence corroborating this.

The Hearing Officer was also not prepared to favourably apply discretion under the “other circumstances” provision on the facts and circumstances argued by the Applicant.

 

 Ashley Chase Estate Limited v Spanish Foods (Aust) Pty Ltd [2013] ATMO 104 (18 December 2013)

Successful opposition by Ashley to registration of the trade mark shown below for various goods in class 30.

Ford Farms Logo

The Applicant did not file any evidence or take part in the hearing.

This was a straightforward case of bad faith. Mr Paphitis met with representatives of Ashley in his capacity as representative of Capital Foods, but he was also sole director of the Applicant.  Commercial quantities of various cheeses were supplied by Ashley to Capital Foods for evaluation with invoices bearing the applied for mark which were dated before the trade mark application was filed.

Given this business relationship, the Hearing Officer considered the Applicant’s conduct amounted to more than exploitative behaviour and was of an unscrupulous, underhand or unconscientious character. A reasonable man should be aware that he ought not apply for trade mark registration in these circumstances.

 

Angelica Cota v East Side Clothing Co Pty Ltd [2013] ATMO 105 (19 December 2013)

Unsuccessful opposition by Angelica Cota to an application for removal of her registered trade mark shown below for handbags, wallets and coin purses in class 18 and t-shirts in class 25 alleging non use during the 3 year period ending 13 October 2012.

Lula by Angelica Cota Logo

Ms Cota filed a statutory declaration as to the relevant goods being marketed and sold internationally, including in Australia, since 2003. She attached undated photographs of products in her LULA collection and relied on Google Australia search results.

The Hearing Officer formed the view that the evidence relied upon did not support genuine commercial use of the trade mark in Australia. While it appeared Ms Cota had been selling LULA branded goods in the USA, there was no evidence of a single sale in Australia or anything to indicate she had marketed goods deliberately towards Australian consumers. Further, there was no reasonable basis for exercising discretion and so the trade mark registration was removed from the Register in its entirety.

 

Apple Inc. v Metropage Pty Ltd [2013] ATMO 106 (23 December 2013)

Successful opposition by Apple to registration of the trade mark IBAD for electronic information display terminals in class 9.

The Hearing Officer was satisfied Apple’s iPad trade mark enjoyed a substantial Australian reputation as at 13 October 2011 following the Australian launch of its tablet computer product on 28 May 2010.

The Applicant contended that its interest was in a range of display kiosks that are large free standing or shop front window mounted designed for public access. The IBAD trade mark was an acronym formed from “Interactive Business Advertising Display”. However, the single example of the display in evidence was of a rectangular touch-screen computer device, very similar to Apple’s tablet device, with the trade mark shown as iBAD.

The Hearing Officer considered the iBAD trade mark shown in evidence was visually and aurally very similar to Apple’s iPad trade mark. There is a real risk of confusion with consumers being caused to wonder whether there is a connection between the Applicant’s goods and Apple, or mistakenly assuming these goods are those of Apple or marketed with its authority.

 

Ironman 4×4 Pty Ltd v Australian Performance Development Pty Ltd [2013] ATMO 107 (23 December 2013)

Unsuccessful opposition by Ironman 4×4 to registration of the trade mark shown below for air rams and air intake snorkels for vehicles in class 12.

Safari Snorkel Logo

The trade mark application carried an endorsement describing the trade mark as consisting of the combination of the words SAFARI SNORKEL and the three dimensional shape of an air ram of an air intake snorkel as shown in the representations attached to the application.

The Hearing Officer was not persuaded by the Opponent’s allegation of lack of inherent distinctiveness and considered the composite trade mark, as a whole, is inherently capable of distinguishing the Applicant’s goods. Potential customers are likely to see both the word and device element that is prominently displayed on the air ram and the design features of the goods. The inherent distinctiveness of the word SAFARI was relevant and the Applicant already had a trade mark registration for this word for snorkels and vehicle parts.

The Opponent also alleged the trade mark application was filed simply for the purpose of gaining some advantage over competitors and the Applicant did not intend to use it as a badge of origin because the shape elements are simply descriptive or illustrative of the goods with the word elements being a mere colourable flourish to enhance overall distinctiveness. The trade mark was never intended to create any composite impression as an indicator of origin. The Hearing Officer was not persuaded by this argument and relied on previous case law for the well established proposition that the act of filing the trade mark application was prima facie evidence of an intention to use it. Further, the Applicant’s evidence disclosed actual use of the composite trade mark from 2008. As a result, the Opponent has not done enough to upset the presumption of the Applicant’s intention to use the applied for mark.

This case reinforces the registrability of composite word and shape trade marks, even where the shape elements are descriptive or functional. However, the registration rights are likely to be narrowly construed if the Applicant seeks to enforce the ensuing registration against competitors because significant weight ought to attach to the presence of the distinctive word SAFARI in the composite mark.