Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – February 2014

Radio Systems Corp v Sustainable Agriculture and Food Enterprises Pty Ltd [2014] ATMO 12 (13 February 2014)

Successful opposition under s60 by Radio Systems Corporation to registration of an application to register the trade mark petsafe logo as shown below for various animal foodstuffs in class 31.

petsafe logo

The opponent owned an earlier registration for the word mark PETSAFE in classes 6, 9 and 19 for various pet doors and electronic pet containment systems. This trade mark had been used in Australia since May 1998 for pet containment systems, bark control devices, weather protection devices, pet training devices, plastic pet doors, pet food stations and pet water stations.

The applicant asserted use of PETSAFE since June 1994 for petfood and since March 2003 for pet food supplements, but its evidence showed a single instance of use in September 2001 with first sales of dog food occurring in March 2009.

The hearing officer was satisfied the opponent had established an Australian reputation in its PETSAFE mark and that , given the high degree of similarity of the respective marks, use of the applied for mark for animal foodstuffs would be likely to deceive or cause confusion, notwithstanding the differences in the respective goods. Significant weight was given to general pet care goods of the type sold by the opponent being offered for sale in close proximity to animal foodstuffs

 

Carboline International Corporation v Multitex Corporation Pty Ltd [2014] ATMO 13 (14 February 2014)

Partly successful opposition by Carboline to registration of the POLYCLAD logo trade mark shown below for various insulation products in classes 17 and 19.

POLYCLAD logo

The opponent had an earlier International Registration designating Australia for the trade mark POLYCLAD covering protective coatings in class 2 and had used this trade mark overseas since 1947 and in Australia since 2010 for protective coatings for pipelines.

The applicant had been using its POLYCLAD logo for a lightweight cladding system providing thermal insulation and weatherproofing for the exterior walls of residential and commercial buildings.

The applied for trade mark was considered to be at least deceptively similar to the opponent’s registered POLYCLAD word mark. The hearing officer did not consider the applicant’s class 19 insulation cladding goods to be similar to the opponent’s protective coatings in class 2. However, the applicant’s class 17 insulation materials for use in cladding were regarded as similar to class 2 protective coatings. The hearing officer commented:

“Turning now to the Applicant’s goods in class 17, I note that scope of “insulating materials for use in cladding” is broader than the goods specified in class 19. This is because, firstly, rather than insulation cladding it is a more general description of insulating materials (albeit for use in cladding) that is specified; and secondly, although the materials are for use in cladding, it is not specified what the cladding is in relation to and therefore a typical form is less readily apparent (as opposed to class 19 wherein it is specified that the cladding is insulation cladding for building).

Due to the broader range of goods encompassed within class 17 there exists, notionally at least, circumstances in which confusion is likely. For example insulating materials include PVC plastics or polyurethane foam. The cladding could be in respect of pipes, and PVC plastics and polyurethane foam are commonly used as pipe cladding both for insulation and to form a protective barrier. The Opponent’s goods in class 2 may also be for the protection of pipe surfaces (although I note they are not limited as such). The provision of both under the name POLYCLAD, irrespective of the pentagon device which only saves the marks from being identical, is likely to cause purchasers to wonder if both originate from the same source by virtue of their application to pipes.

A similar conclusion would apply in respect of machinery, industrial plant equipment, rigs and refineries (or other such structures that are not buildings per se), where it is reasonable to suppose that insulation, cladding, paints and coatings might be created specifically for application to them. In other words, I consider that the purpose and trade channels of the parties’ goods may well be the same, and that the specificity of such potential purposes and trade channels leads to a likelihood of confusion. Accordingly, the ground of opposition under section 44 is established in respect of the Applicant’s goods in class 17.”

The hearing officer also considered the s60 ground of opposition, but was not convinced the evidence filed by the opponent established the opponent’s POLYCLAD trade mark had acquired a sufficient Australian reputation such that deception or confusion would be likely.

 

Bioengineering AG [2014] ATMO 14 (21 February 2014)

Refused application to register the trade mark shown below for metal valves in class 6, agitators, mixing machines and filters in class 7 and various apparatus for biotechnological and chemical processes in class 9.

BIOENGINEERING Logo

The hearing officer considered the contrasting stylisation of the lower case letter “I” imbued the applied for mark with a degree of distinctiveness. However, taking account of the simplicity of stylisation and the frequency with which the letter ‘I” is represented in a special or particular manner in the trade marks of others, the hearing officer considered it likely that other traders will, in good faith, desire to use the applied for mark or a mark so nearly resembling it.

The degree of inherent adaptation to distinguish the relevant goods was low and, since no evidence of use, intended use or other circumstances was submitted, the trade mark application was refused.

The applicant offered to disclaim the right to exclusive right to use of the word BIOENGINEERING apart from the mark as shown. However, the hearing officer did not consider such a disclaimer would make registration appropriate. A disclaimer is not a device to be used to permit registration of a word that should be regarded as unregistrable.

 

Century 21 Real Estate LLC [2014] ATMO 15 (26 February 2014)

Refused application to register the trade mark SMARTER, BOLDER, FASTER for real estate brokerage services in class 36.

The hearing officer considered this combination of words was laudatory and totally devoid of any inherent distinctiveness. Any real estate brokerage may, without improper motive, wish to claim that its sales staff is ‘smarter, bolder and faster’.

Each word within the trade mark is laudatory and the collocation of these words does not add inherent adaptation to distinguish.

Reliance was placed on Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 to argue that the applied for trade mark has no significations or associations in relation to real estate brokerage services. However, the hearing officer confined this as being appropriate to only descriptive and geographical words. Reference was made to Unilever Australia Ltd v Societe Des Produits Nestle SA [2006] FCA 782 where registration of GO ON… was refused. The fact that a trade mark is not descriptive of the relevant goods does not mean that is has an inherent capacity to distinguish.

The applicant also argued that the trade mark is a hendiatis in that it is a phrase which adds emphasis by using three words to express one idea, namely to surpass, but this did not alter the hearing officer’s assessment of the mark.

Some informal evidence of use from 2011 was submitted, but the phrase SMARTER. BOLDER. FASTER was used in close proximity to the CENTURY 21 house mark. The hearing officer considered this showed use of the phrase as a laudation of the applicant’s staff and it was in the shadow of the CENTURY 21 trade mark. It was a ‘limping mark’ which could not stand up on its own. Consequently, this evidence was given little weight.

 

Dick Smith Investments Pty Ltd v Roger John Ramsey [2014] ATMO 16 (26 February 2014)

Unsuccessful opposition by Dick Smith to an application for removal of its OZEMITE trade mark registration on the ground of non use during the three year period ending on 1 May 2011.

This matter was part of a long running dispute between the parties regarding their yeast and vegetable extract spreads of a similar nature to the iconic Vegemite brand of spread. The OZEMITE trade mark had been registered since 28 October 1999. Ramsay subsequently obtained registration of his AUSSIE MITE trade mark on 8 November 2006 with effect from 7 May 2001 under the ‘other circumstances’ provision following an unsuccessful opposition by Dick Smith.

Dick Smith had publicised, during the relevant three year period, the forthcoming launch of the OZEMITE product, but the earliest actual sale was in May 2012. There were subsequently sales of some 500,000 jars of this product to over 2,500 retail stores throughout Australia.

The publicity relating to the intended launch was not characterised as trade mark use because the evidence demonstrated that the products did not become available for sale in Australia until some time in 2012 which was well outside of the relevant period.

Dick Smith also argued that there were circumstances that were an obstacle to use of the OZEMITE trade mark during the relevant period. The circumstances relied upon revolved around the purported unavailability of suitable brewers’ yeast, so Dick Smith decided to develop a way of producing the spread without using brewers’ yeast. However, the hearing officer considered this was a voluntary choice and not attributable to any external event. The evidence pointed to other brewers’ yeast or a practical yeast extract product being available.

The hearing officer was not prepared to exercise discretion and leave the OZEMITE trade mark on the Register. Dick Smith’s own evidence pointed to confusion with the AUSSIE MITE product and the hearing officer considered it likely for this to continue if the OZEMITE trade mark was allowed to remain on the Register.

Dick Smith has appealed this decision to the Federal Court and has filed a new application to register a composite label trade mark for DICK SMITH’S OZEMITE as shown below:

OZEMITE Label

The battle continues!

 

Bentley Worldwide Shoes Limited v Transport For London [2014] ATMO 17 (26 February 2014)

Unsuccessful opposition by Bentley to registration of the trade mark shown below for a range of printed matter in class 16 and clothing, footwear and headgear in class 25.

UNDERGOUND Logo

Bentley relied on its prior registration for the word mark UNDERGROUND which covered various optical apparatus, eyewear, sound/image equipment, magnetic data carries and recording discs in class 9 and jewellery in class 14. The hearing officer regarded the respective trade marks to be deceptively similar, but the applicant’s goods in classes 16 and 25 were not similar to any of the goods covered by the earlier registered UNDERGROUND word mark.

Bentley also argued a better ownership claim based on use of the composite trade mark shown below:

UNDERGROUND england Logo

However, this ground of opposition was quickly dismissed due to the significant differences in the respective marks. The applied for trade mark was not substantially identical to this composite trade mark. There was not a total impression of similarity between them.

Finally, Bentley also relied on the Australian reputation derived from use of its UNDERGROUND trade mark for clothing, footwear and accessories. However, the hearing officer was not satisfied the evidence disclosed a sufficient reputation, so this ground of opposition also failed.

 

Gregory Paul Roebuck v News Limited [2014] ATMO 19 (27 February 2014)

Unsuccessful opposition by Roebuck to registration of the trade mark CARSGUIDE for a range of goods and services in classes 9, 16, 35, 36, 38 and 41.

The applicant operated the well established website at http://www.carsguide.com.au/ and could point to use of the CARSGUIDE trade mark for printed publications since 1993 with online use being continuous since 2002 or 2003.

Roebuck operated the website at http://carsguide.com/ since at least 2004 directed to providing information on cars of interest to enthusiasts. The carsguide.com domain name was registered in the late 1990s and Roebuck also obtained the carsguide.tv, carsguide.co.nz and carsguide.co domain names which point to his website.

There was a preliminary issue relating to a very late application by Roebuck to file further evidence, but that application was refused.

The only ground of opposition seriously pursued by Roebuck was that CARSGUIDE was not capable of distinguishing the applicant’s goods and services, but the hearing officer was not persuaded by Roebuck’s evidence and submissions on this ground.

The hearing officer considered that CARSGUIDE was not entirely devoid of any capacity to distinguish. She was seemingly influenced by the applicant’s earlier registrations for stylised versions of the CARSGUIDE trade mark.

When considering the evidence relied upon by the applicant, the hearing officer took the view that, although differing forms of the CARSGUIDE mark had been used over the years, the essential element of all the trade marks featured was the word CARSGUIDE. The other matter could be characterised as additions or alterations which did not substantially affect the identity of the CAARSGUIDE word mark. The hearing officer was also prepared to accept use of the carsguide.com.au domain name as constituting use of the CARSGUIDE word mark. The applicant’s evidence of use was persuasive and tipped the balance decisively in favour of registration. As a result, Roebuck had not established the ground of opposition based on insufficient distinctiveness.

 

Universal International Music BV v Island Company LLC [2014] ATMO 18 (28 February 2014)

Unsuccessful opposition by Universal International to registration of the trade mark ISLAND CLOTHING for a range of clothing and apparel in class 25.

The opponent did not file any evidence or submissions. Since it carries the onus of establishing one or more grounds of opposition and there was no evidence to support any ground, the hearing officer simply dismissed the opposition.

 

Combined Group of Companies Pty Ltd v Reln Pty Ltd [2014] ATMO 20 (28 February 2014)

Partly successful opposition by Combined Group to an application for removal of its trade mark registration for Rainmate alleging non use during the three year period ending on 20 January 2012.

The Rainmate registration covered “water supply installation” in class 11.

The evidence disclosed use of the trade mark shown below for a flat pack plastic water tank:

rainmate logo

Plastic water tanks and water storage tanks of plastic are classified in class 20, so the issue in dispute was whether use for a plastic water tank in flat pack (kit) form could be relied upon to show use for a “water supply installation”.

The specification of the Rainmate registration was not expressly limited to goods in class 11, so it was appropriate to form a view on the ordinary and natural meaning of “water supply installation”. Classification is primarily a matter of convenience in administration. It is necessarily to form an objective view as to whether a person who peruses the Register would understand ‘water supply installation” as including plastic water tanks.

The hearing officer relied on the definition of “installation” in the Macquarie Dictionary as “something installed” or “a system of machinery or apparatus placed in position for use”. In his opinion, the word installation in the context of the goods includes flat pack plastic water tank kits designed to be put together and installed by the purchaser, handyman or tradesperson.

The end result was that the hearing officer directed the specification be amended to “plastic water tanks and parts therefor” and for the class to be amended from class 11 to class 20.