Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – January 2013

Scotch Whisky Association v Jin Ho Lee and Myong Gil Lee [2013] ATMO 1 (9 January 2013)

Successful opposition to registration of a trade mark for a label containing the word McDowell’s for whisky in class 33 based on lack of intention to use. The evidence disclosed a pattern of the Applicants applying to register trade marks owned by others which were well known in other countries. The inference was the Applicants filed the applications only in order to traffic in those trade marks and not to use them in respect of goods or services.

 

Linecrest Pty Ltd v Cobannah Holdings Pty Ltd as trustee for the Lollymania Trust [2013] ATMO 2 (9 January 2013)

Successful opposition to registration of a trade mark for the words BIG HAND for confectionery in class 30 based on a prior registration for a composite mark containing the words Big Foot with an image of a foot which was previously assigned from the applicant to the opponent. The Delegate found the respective trade marks were deceptively similar based on material showing how these marks were actually used.

 

Castle Co Pty Ltd v Murray Goulburn Co-Operative Co Ltd [2013] ATMO 3 (14 January 2013)

Partially successful non-use application for removal of a trade mark registration for NATUREGUARD in class 5. Evidence disclosed use of the mark during the relevant three year period for a specific product and the Delegate was only prepared to exercise discretion in a limited manner. Registration limited to “vitamin preparations to protect from or to repel insects”.

 

Next Retail Limited v Cubic Transportation Systems, Inc [2013] ATMO 4 (22 January 2013)

Opposition to registration of an application to register the trade mark NEXTACCOUNT in class 9. Extension of time to serve evidence in support allowed despite objection from applicant, but opponent did tender evidence prior to decision being made.

 

Michael Harvey v Lion-Beer, Spirits & Wine Pty Ltd [2013] ATMO 5 (22 January 2013)

Successful opposition to registration of an application to register the trade mark  EXTRA DRY for beers and ales in class 32. The words “extra dry” were descriptive and the applicant’s evidence was insufficient to satisfy the Delegate these words had acquired a secondary meaning as a trade mark over and above their ordinary description.

 

Lion-Beer, Spirits & Wine Pty Ltd v Michael Harvey [2013] ATMO 6 (22 January 2013)

Unsuccessful opposition to registration of an application to register the trade mark Tossers Extra Dry in class 32 based on prior use and registration of TOOHEYS EXTRA DRY. Delegate was not satisfied the respective trade marks were deceptively similar or that use of the Tossers Extra Dry trade mark would be likely to cause deception or confusion.

 

Next Retail Limited [2013] ATMO 7 (25 January 2013)

Opposition to registration of an application to register the trade mark NEXTLEVEL in class 25. Extension of time to serve evidence in support allowed despite objection from IP Australia, but opponent did tender part of its evidence prior to decision being made.

 

Boehringer Ingelheim Vetmedica GmbH [2013] ATMO 8 (30 January 2013)

Application to register the trade mark SERAQUIN allowed to proceed to acceptance for veterinary preparations for dogs and cats in class 5 despite encountering an examination objection based on the suffix –QUIN being an INN (International Non-proprietary Name) stem for quinalone derivatives.

 

Celgene Corporation [2013] ATMO 10 (30 January 2013)

Application to register the trade mark CELOMID allowed to proceed to acceptance for pharmaceutical preparations in class 5 despite encountering an examination objection based on the prefix CEL- being an INN (International Non-proprietary Name) stem for cellulose derivatives.