Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – January 2014

Unilever Plc v XADO-Holding Ltd [2014] ATMO 1 (8 January 2014)

Unsuccessful opposition by Unilever to registration of the trade mark DOMO for a broad range of cleaning and personal care products in class 3.

Unilever relied on use and registration of its OMO and DOMESTOS trade marks, but the Hearing Officer did not consider the applied for DOMO mark was deceptively similar to either of them so the s44 ground of opposition failed. The Delegate commented that “the strikingly simplistic palindrome of the opponent’s OMO trade mark is memorable” and was not satisfied that the DOM prefix shared by the DOMO and DOMESTOS trade marks is sufficient to cause deception of confusion. While Unilever had demonstrated a substantial Australian reputation through use of its OMO and DOMESTOS trade mark, the Hearing Officer was not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the respective goods. The lack of similarity between the respective trade marks was significant factor against confusion.

 

FetchTV Pty Ltd v LemonStone Group Pty Ltd [2014] ATMO 2 (10 January 2014)

Successful oppositions by FetchTV to registration of the trade marks FETCH A NATURAL RESOURCE Logo and FETCH SEARCH SOLUTIONS for search engine related services in class 42.

The Opponent is an Australian wholesale subscription television provider which markets and distributes its services via partnerships with leading Australian ISPs. It had earlier trade mark registrations for FETCH, FETCH TV and GOFETCH covering a broad range of goods and services in classes 9, 38 and 41.

The Applicant had, since 1998, developed proprietary search engine software for use in searching the websites of its clients, while the applied for trade marks were for a general internet search engine.

The oppositions were upheld on the s44 ground, so it was not necessary to consider the Australian reputation of the Opponent’s trade marks.

The Hearing Officer reviewed cases on similar services, particularly MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 and cases on goods being closely related to services, particularly Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 145 .

The Applicant’s search engine services were considered similar to the Opponent’s registered “broadcasting and reception of television programmes, radio, cable television, computer programmes and signals (digital and/or analogue) by means of cable, satellite and/or multipoint distribution systems and/or networks (including the Internet); providing telecommunications links to the Internet; webcasting and datacasting; interactive broadcasting services; interactive audio services; providing music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; providing interactive access to music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission” services.

These search engines services were also closely related to the Opponent’s registered “computer hardware and software for use in relation to the recording, transmission or reproduction of sound or images; communication devices; television apparatus and equipment; apparatus and equipment for use with televisions and television set top units and receivers; television and telecommunications receiving equipment, video and audio products and apparatus including set top units, adaptors, couplings, cables, parts and accessories; equipment for receiving digital television program signals and interactive broadcasting services; personal digital recorders; personal video recorders; hard drives” goods.

The Hearing Officer was mindful of technology “convergence” which was referred to in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 and noted “ the context of the consideration is one where desktop computers may be used as television sets and television sets may be used as computers or web browsers, and where there is also convergence between the services offered by Internet based entertainment companies and satellite or cable television services”.

Against this background, The Hearing Office went on to find the applied for FETCH SEARCH SOLUTIONS trade mark was substantially identical to the Opponent’s registered FETCH and FETCH TV trade marks, while the applied for FETCH A NATURAL RESOURCE Logo was deceptively similar to FETCH and FETCH TV.

 

Societe des Produits Nestle S.A. v Jason Marks [2014] ATMO 3 (10 January 2014)

Successful opposition by Nestle to registration of the trade mark INSPERESSO for various goods and services in classes 11, 30, 35, 37 and 43, particularly covering various coffee related goods and services.

The opposition was upheld under the s60 ground with the Hearing Officer being satisfied that Nestle enjoyed a very extensive and long standing reputation for its NESPRESSO coffee goods internationally and its Australian reputation was also significant. Although the respective INSPERESSO and NESPRESSO trade marks were not necessarily deceptively similar, the Hearing Officer considered that, given the reputation of the NESPRESSO mark and the degree of similarity between it and INSPERESSO, there was a likelihood of confusion.

 

Dimitri V. Chiotelis and Evangelos E. Chiotelis v TAP Worldwide LLC [2014] ATMO 4 (14 January 2014)

Unsuccessful opposition by Chiotelis to an application for removal of a trade mark registration for SMITTYBUILT (stylised) for vehicles and apparatus for locomotion by land, air or water in class 12, alleging non use during the 3 year period ending on 28 February 2012.

Chiotelis tendered various invoices purporting to show use of the SMITTYBUILT trade mark during the relevant period, but there was no corroboration and some inconsistencies. The removal applicant relied on the Nodoz Trade Mark case [1962] RPC 1 as authority for the proposition that, where a trade mark owner relies on only a few instances of alleged use, such acts ought to be established by “if not conclusive proof, at any rate overwhelming convincing proof”. The hearing officer commented that there was force in this submission and the use being relied upon was very slight and far from convincing.

However, it was not necessary for the hearing officer to reach a concluded view on this evidence because he found that the use being relied upon was not “authorised” by the trade mark owner. Chiotelis relied on two Agreements as granting relevant licences to two companies, but they were silent on the issue of control and there was no evidence that the trade mark owner was actively involved by producing or selecting the relevant goods or exercised financial control over the licensees.

The hearing officer considered there were no circumstances that were an obstacle to use of the SMITTYBUILT trade mark or which warranted a favourable exercise of discretion. As a result, he ordered the trade mark to be removed from the Register.

 

The Procter & Gamble Company [2014] ATMO 5 (17 January 2014)

An objection to P & G’s application to register SWEEPER + VAC as a trade mark for a broad range of goods in class 21 was upheld.

The application was filed on 23 April 2013 and so the amended s41 giving effect to the presumption of registrability was applicable. The amendments came into effect on 15 April 2013 and result in a trade mark being presumed to be registrable unless the Registrar is satisfied, on the balance of probabilities, that there is a ground for rejecting it.

Whether an applied for trade mark is inherently adapted to distinguish and capable of distinguishing the applicant’s goods is assessed having regard to whether other persons, being actuated only by proper motives, will think of the word and want to use it in connection with similar goods.

In this case, the hearing officer agreed with the examiner that SWEEPER+ VAC refers to a device capable of cleaning a surface via sweeping and/or suction and that other traders are likely to think of this expression and want to use it in relation to various household utensils, brushes and articles for cleaning purposes claimed in the applicant’s specification.

Accordingly, there was a proper ground for rejection and the applicant did not provide any evidence of use or other circumstances to support acceptance. The hearing officer gave the applicant the opportunity to amend its specification to delete the problematic goods.

 

National Health Call Centre Network Ltd [2014] ATMO 6 (28 January 2014)

An objection to an application to register NATIONAL HEALTH SERVICES DIRECTORY for a range of goods and services in classes 9, 16, 41, 42 and 44 was upheld.

The application was filed on 20 June 2012 which was before the 15 April 2013 amendments, so the now repealed version of s41 was applicable.

The hearing officer agreed with the examiner that the applied for mark clearly describes a nationwide directory of health services and noted the applicant’s evidence stated that it is a ‘consolidated and comprehensive national directory of health services and provider information’. However, he considered this combination of words possesses a ‘modicum’ of inherent adaptation to distinguish, so s41(5) was applicable and it was necessary to consider the applicant’s evidence to decide whether the applied for mark does or will distinguish the relevant goods and services as those of the applicant.

The applicant relied upon evidence showing its directory became operational after the filing date of the trade mark application. While there was substantial expenditure on developing the software application (app) for mobile devices, the amount spent on actually promoting the name of the directory was much less evident. Promotion was predominantly targeted at health professionals, but the short survey relied upon by the applicant was not particularly convincing in showing a clear association with the applicant. The other evidence disclosed some descriptive use of the words ‘national health services directory” as well as some use of the acronym NHSD and use of the words or the acronym with a stylised magnifying glass device, but only for a limited range of goods and services.

The hearing officer was not satisfied this evidence demonstrated a capacity for the words applied for to function as a badge of origin and distinguish the applicant’s goods and services, so he rejected the trade mark application in its entirety.

 

Roger Maier v Asos Plc [2014] ATMO 7 (28 January 2014)

Partly successful opposition by Maier to registration of the trade mark ASOS for a range of goods in classes 3, 18 and 25 as well as a broad range of retailing services in class 35. The application was filed on 9 June 2010.

The opponent had an earlier trade mark registration for ASSOS dating from 14 June 2005 covering clothing, footwear, headgear in class 25. During examination, the applicant had been able to overcome this prior mark based on the ‘other circumstances’ provision under s44(3)(b).

The hearing officer referred to McCormick & Co Inc v McCormick [2000] FCA 1335 where Kenny J confirmed that the s60 reputation ground overrides and is not subject to s44(3). Although the Opponent had been selling cycling clothing in Australia since 1996, the hearing officer was not satisfied the evidence disclosed the ASSOS mark had acquired an Australian reputation as at 9 June 2010, so the s60 ground of opposition failed.

For the s44 ground of opposition based on the opponent’s prior ASSOS registration, the hearing officer considered this ground was established in respect of the applicant’s claims to goods in class 25 and the retailing of clothing, clothing accessories and footwear in class 35. The hearing officer then went on to consider the applicability of other circumstances under s44(3)(b) and prior continuous use under s44(4). Although the ASOS application had been accepted under s44(3)(b), the hearing officer considered the evidence supported registration based on prior continuous use and so s44(4) was satisfied.

In doing so, the hearing officer commented as follows:

“I note that section 58A is said to apply if the application has been accepted because of subsection 44(4). In the present matter I have found that the application may be registered because of subsection 44(4). However, nothing hangs on this. The salient fact is that subsection 44(4) is applied and whether this occurs during examination or opposition is not relevant.”

However, by applying s44(4), the hearing officer then had to consider the ground of opposition under s58A and found that it had been partly established because the opponent’s evidence demonstrated Australian use of the ASSOS mark for men’s and women’s cycling clothing before the applicant’s first use of its ASOS trade mark.

In the end the hearing officer was prepared to allow the ASOS application to proceed provided the class 25 specification was amended to exclude goods for use by cyclists and the class 35 specification was amended to exclude online retailing of clothing, clothing accessories and footwear for use by cyclists.

 

Unilever Australia Limited/and jointly by Unlilever Australia Limited and Unilever plc. v The Proctor & Gamble Company [2014] ATMO 8 (29 January 2014)

Unsuccessful oppositions by Unilever to registration of the trade marks PODS and POWER PODS (stylised) for laundry stain removers and laundry detergents in class 3. The POWER PODS application also covered various class 11 goods

As an initial point, the hearing officer considered the relevant date for determining the parties’ rights was the filing date of the opposed trade mark applications, notwithstanding these applications claimed earlier Convention priority dates based on corresponding US applications.

The opponent asserted that the word “pods” was not distinctive and relied on its use of this word in a descriptive manner as well as some other descriptive use overseas. However, the hearing officer did not give much weight to this. She considered that PODS merely conveys an illusory reference to a vessel or some form of protective housing, rather than being descriptive of the applicant’s class 3 goods. This word possessed sufficient inherent adaptation to distinguish these goods and this view was also consistent with the state of the Trade Marks Register. The hearing officer was not convinced with the opponent’s argument that the word ‘pods” has become a trendy marketing term likely to be legitimately needed by other traders. Rather, she was satisfied that none of the applicant’s goods would ordinarily be referred to as “pods”. The POWER PODS mark was also rendered in a stylised manner sufficient to support registration.

The opponent also contended that the applicant did not have the requisite intention to use the applied for trade marks. It argued these terms will not be used as trade marks because they are purely descriptive. However, this argument was quickly dismissed. The act of applying for registration is taken to be evidence of an intention to use. The hearing officer considered the opponent’s evidence did not displace this presumed intention and so the onus was not shifted to the applicant to positively establish the requisite intention.

 

OMS Investments Inc. v DuluxGroup Australia) Pty Ltd [2014] ATMO 9 (31 January 2014)

Successful opposition by OMS Investments to registration of the trade mark WEED ‘N’ FEED for various agricultural and horticultural products in classes 1 and 5.

Since this trade mark application was filed on 22 October 2007, distinctiveness was assessed having regard to the now repealed s41 of the Trade Marks Act 1995.

The hearing officer considered that WEED ‘N’ FEED was totally lacking any inherent distinguish the applicant’s goods and its registrability was to be assessed under s41(6). Since the applicant could not rely on evidence establishing this trade mark had acquired factual distinctiveness through commercial use before the filing date, the application was refused.

Significantly, the hearing officer distinguished an earlier decision finding CLEAN-N-SOAK had some inherent distinctiveness in the context of contact lens care preparations and commented as follows:

“I do not feel that the decision in Re Application by Allergan Inc. ultimately assists the Applicant. Even if I ignore the Federal Court decisions which soon followed that case and which in my view disfavor the Applicant, there remain small but critical points of distinction between “clean-n-soak” and the Trade Mark before me. The Applicant refers to the “visually pleasing mirror-effect of the phonetically similar words “Weed” and “Feed”, which conveys something of a “trade mark feel”.” I tend to agree with that submission but I must balance it against the manifest capacity of the Trade Mark to ordinarily indicate the intended purpose of the applied-for goods. Unlike the trade mark “clean-n-soak”, there is to my mind and at the Filing Date no appreciable grammatical distinction to be drawn between the expression “weed and feed” and the expression “weeding and feeding”, both of which I believe would be equally used by traders, a conclusion supported by the evidence which shows that the expression “weed and feed” has been used in a non-trade mark sense by various individuals, unconnected with the parties. Nor am I moved by the Applicant’s submission that the words “herbicide” or “weed killer” and “fertiliser” are the usual words to use in place of the expression “weed and feed” albeit that the evidence shows that sometimes – as I would expect – those words are used to describe the same functioning of similar goods. In my view, “weed and feed” and its colloquial equivalent “weed ‘n’ feed” is an ordinary way of indicating the nature of the Goods.”

There was also evidence of descriptive use of the phrase “weed and feed” by others and the evidence relied upon by the applicant predominantly showed use of the house mark YATES with, or in proximity to WEED ‘N’ FEED.

 

Western Australian Land Authority [2014] ATMO 10 (31 January 2014)

Application by Western Australia Land Authority to register the composite trade mark shown below for various real estate related goods and services in classes 16, 35, 36 and 37 was refused.

Cockburn Coast the jetty Logo

The hearing officer agreed with the examiner that a prior registration for the trade mark ‘the jetty’ covering services in class 43 relating to the rental of holiday accommodation was a valid objection. The applicant’s real estate services were regarded as closely related to these class 43 services.

This case illustrates the rather narrow approach taken by IP Australia to the issue of deceptive similarity when one mark is wholly contained with another.

The applicant had obtained registration of other composite trade marks containing COCKBURN COAST relating to other land precincts in its development of the former Robb Jetty industrial area and its surrounds. The words “The Jetty” were clearly a reference to a particular coastal location featuring a jetty and occupied a relatively minor portion of the composite mark. Nonetheless, the hearing officer commented as follows:

“The Second Cited Trade Mark consists solely of the words ‘the jetty’. There is nothing else to distinguish this trade mark: no logo; no stylisation. The Applicant’s Trade Mark consists of three main elements: the watercolour device of a jetty; the words ‘COCKBURN COAST’; and the words ‘The Jetty’. The words COCKBURN COAST carry little, if any, trade mark weight as they are simply a geographical indicator referring to the coastal region proximate to the city of Cockburn. The watercolour device of a jetty serves to emphasise the words ‘The Jetty’ in the Applicant’s Trade Mark. I am not convinced by the Applicant’s assertion that the words ‘The Jetty’ are somehow of little significance in the Applicant’s Trade Mark when considered as a whole. It is likely that consumers who are familiar with the Second Cited Trade Mark are likely to be caused to wonder whether similar services, if provided in connection with the Applicant’s Trade Mark, originate from the same trade source. I am, therefore, satisfied that the Applicant’s Trade Mark is deceptively similar to the Second Cited Trade Mark.”

Another objection based on a registration for the trade mark THE JETTY was withdrawn because the applicant’s goods and services were not similar or closely related to the “apartments (metallic structures or buildings”) in class 6 covered by that registration.