Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – July 2013

Next Retail Limited [2013] ATMO 51 (2 July 2013)

Successful application by Next Retail for an extension to file evidence in support of its opposition to registration of the trade mark Next Director for educational materials in class 16 and education related services in class 41.

The Notice of Opposition was filed on 31 May 2012. The Opponent had already obtained two extensions totalling 6 months up to 28 February 2013 and applied for a further 3 month extension to 28 May 2013. IP Australia indicated it intended to refuse this latest extension and the Opponent was obliged to request a hearing to contest this.

In deciding whether an extension is appropriate, relevant considerations are whether the extension applicant has made out a proper case, the private interests pf the parties and the public interest, a serious opposition is in progress and there has been no undue delay.

The reasons relied upon for the extension were to the effect that evidence in support was largely completed but additional time was needed to finalise the collation of additional sales data and other information.

The Hearing Officer commented that these reasons were insufficient. However, the Opponent filed its complete evidence in support on the day of the Hearing and this satisfied the Hearing Officer that the extension was justified.

 

Treasury Wine Estates Vinters Limited v Serafino Maglieri [2013] ATMO 52 (8 July 2013)

Unsuccessful opposition by Serafino Maglieri to registration of the trade mark STEVE MAGLIERI for wine in class 33.

Foster’s Wine Estates Ltd had previously been successful in its opposition to registration of the trade mark Serafino Maglieri in the name of Serafino Wines Pty Ltd based on deceptive similarity with an earlier registration for MAGLIERI. On the same day that opposition was filed (25 August 2006) Maglieri Wines Pty Ltd filed the application to register the trade mark STEVE MAGLIERI. That application was subsequently assigned to Foster’s Wine Estates Pty Ltd and then to Make Wine Pty Ltd and ultimately to Treasury Wine Estates Vintners Limited.

There was a 25 August 1998 Agreement under which Letizia Maglieri, Serafino Maglieri and Sepino Nominees Pty Ltd sold the Maglieri Wines Pty Ltd business to Mildara Blass Ltd which subsequently changed it name to Foster’s Wine Estates Limited which was a predecessor in title to the current trade mark applicant, Treasury Wine Estates Vintners Limited. That Agreement included the sale of certain Maglieri trade marks and there was a restraint of trade provision where the vendors undertook, for a period of 5 years, to not use the name Steve Maglieri, or any other name or trade mark substantially identical or deceptively similar thereto as a brand or label name. There was a further provision requiring Mr Serafino Maglieri, at the end of the restraint period, to grant Maglieri Wines Pty Ltd an exclusive licence to use the name Steve Maglieri on terms to be agreed, but no licence was negotiated.

Serafino Maglieri was born in Italy and arrived in Australia in 1966 when he adopted Steve as his first name. He established Gully Wines in the McLaren Vale region of South Australia which changed its name to Maglieri Wines. He and Maglieri Wines received various awards prior to the sale of this business. After this sale, he established Serafino Wines Pty Ltd in 2000. Use of Maglieri or Steve Maglieri was severely curtailed during the 5 year restraint period and use of that name after that period was minimal.

The Hearing Officer considered the name Steve Maglieri is certainly known among more knowledgeable wine consumers, but was not convinced that the name had gained a currency in general or among wine consumers such that deception or confusion would be likely to occur. Consequently the s43 ground of opposition was not established.

The Hearing Officer was also not satisfied that the Applicant’s use of the STEVE MAGLIERI trade mark would constitute misleading or deceptive conduct under the Trade Practices Act (as in force in August 2006). Consequently the s42(b) contrary to law ground of opposition also was not established.

The Opponent also argued that the Applicant had filed the STEVE MAGLIERI trade mark application in bad faith and did not intend to use this trade mark. However, these grounds of opposition also failed.

 

FoodPLUS GmbH v George Sokol [2013] ATMO 54 (9 July 2013) 

Successful opposition by FoodPLUS to registration of the trade mark GLOBAL GAS for certification services in class 42. Significantly, the Applicant did not participate by appearing at the hearing or filing written submissions.

FoodPLUS was able to establish it had acquired an Australian reputation derived from use of the GLOBALG.A.P. trade mark shown below for setting standards for the certification of agricultural production processes:

Global Gap Logo 

Reputation was not based on evidence of sales and expenditure. Rather, there were a substantial number of certified producers in Australia and several associate members operating in Australia certified to audit GLOBALG.A.P. standards.

The Hearing Officer thought there was considerable visual similarity and an element of aural similarity between GLOBAL GAS and GLOBALG.A.P. The letters G.A.P. were an acronym for Good Agricultural Practices and the letters GAS in the applied for mark might be mistakenly considered to be a related acronym. There was also a risk of consumers thinking the Opponent is extending its certification services specifically to gas products or services. Consequently there is a real likelihood of consumers wondering or being left in doubt whether the two sets of certification services come from the same source.

 

Sainsbury Engineers Pty Ltd v Steven Jeffs [2013] ATMO 55 (9 July 2013)

Unsuccessful opposition by Sainsbury Engineers to registration of the trade mark shown below for mechanical engineering services (construction) in class 37:

Sainsbury Engineers logo

Prior to filing of the trade mark application on 22 June 2010, the Opponent company was sold to Resource Risk Management Pty Ltd (RRM) with a charge to secure payment of a loan by Mr Donald Christian. The sale included the transfer of all intellectual property (including the name and trade marks). Steven Jeffs was the managing director, secretary and majority shareholder of RRM at the time of the sale. Mr Jeffs effectively controlled the Opponent up until December 2010 when there was a change in shareholding in favour of Mr Christian.

Given this factual background the Hearing Officer was satisfied Mr Jeffs had responsibility to manage the Opponent as a going concern and entitled to obtain trade mark registration for the benefit of the Opponent subject to a constructive trust. While it might have been more prudent to have filed the trade mark application in the name of the Opponent or RRM, it is not uncommon practice for directors to apply in good faith for registration of a trade mark to be used by their company.

As a consequence, the Hearing Officer was satisfied that Mr Jeffs was entitled to claim ownership and the trade mark application was not filed in bad faith. Further use of this mark would not be likely to deceive or cause confusion because it was being used as a badge of origin for the Opponent’s services.

 

 Denise Monk v Travel Leaders Franchise Group LLC [2013] ATMO 57 (17 July 2013)

Unsuccessful opposition by Denise Monk to registration of the trade mark shown below for travel agency services in classes 39 and 43:

Cruise Holidays logo

The Opponent had unsuccessfully sought the Registrar to revoke acceptance and did not file any evidence in support. The Applicant then requested a hearing and filed written submissions. Prior to the hearing, the Opponent belatedly requested permission to file evidence and submissions and to adjourn the hearing. The hearing officer declined this, but did indicate she would take into account the material filed by the Opponent when seeking revocation of acceptance.

The hearing proceeded as scheduled with the Opponent again requesting permission to file further evidence. This evidence was completed a few days after the hearing.

Even though the Opponent had not previously filed any evidence in support, the hearing office took a broad view of the word “further” and considered the further evidence provision was still applicable even where no earlier evidence had been filed. However, she considered this further evidence could with reasonable diligence have been obtained earlier and would not have an important influence on the outcome. Much of it related to earlier proceedings involving the Opponent’s domain name cruiseholidays.com.au . As a result, this further material was not admitted into evidence.

The hearing officer than went on to consider the grounds of opposition being relied upon, namely lack of distinctiveness and bad faith, but did not find the opponent had done enough to establish either of them.

 

Best & Less Pty Ltd v Consolidated Artists BV [2013] ATMO 56 (20 July 2013)

Successful opposition by Best & Less to registration of the trade mark shown below for a range of goods and services in classes 3, 9, 14 and 35

MNG logo

Best & Less and its predecessors had sold various MANGO products, predominantly clothing, since 1986 under licensing arrangements. The Applicant had used and registered the MNG trade mark overseas and in Australia for a range of fashion products and accessories, but there was no evidence showing Australian use of the applied for composite mark.

The Hearing Officer did not attribute much weight to the Applicant’s evidence because it contained inherent contradictions and upheld the opposition on the ground that the Applicant did not have the requisite intention to use the applied for mark under s59 of the Act.

The Applicant had deleted goods and services in classes 9, 14, 18, 25 and 35 to overcome earlier trade mark registrations for MANGO. The deleted items were essentially fashion related. Essentially it had deleted items typically of interest to its business. The remaining items were unlikely to be of commercial interest to its target market. By way of example, the retained class 9 goods were protective clothing. The Hearing Officer considered Best & Less had done enough to shift the onus onto the Applicant to positively establish an intention to use the applied for mark for the retained goods and services, but the Applicant’s evidence did not directly address that issue and the Hearing Officer considered it appropriate to draw an adverse inference from that failure.

 

eBay Inc. v Tradiebay Pty. Limited [2013] ATMO 58 (24 July 2013)

Successful opposition by eBay to registration of the trade mark TRADIEBAY for various paper and printed material in class 16 and classified advertising services in class 35.

The Hearing Officer did not consider TRADIEBAY was deceptively similar to any of EBAY registered marks under s44, but was satisfied that, having regard to the substantial Australian reputation of the eBay trade mark, unauthorised use of the TRADIEBAY trade mark would be likely to cause confusion under s60 of the Act.

eBay had previously been successful in an opposition to the trade mark “earthbay” and the Hearing Officer applied analagous reasoning.

 

Wyeth LLC [2013] ATMO 59 (29 July 2013)

Wyeth failed to overcome an examination objection that the applied for REMISSION POSSIBLE trade mark lacked distinctiveness in the context of pharmaceuticals in class 5, medical education services in class 41 and medical information services in class 44.

The Hearing Officer affirmed the objection the words “remission possible” were descriptive of goods and services that make remission of a number of diseases possible and other traders were likely to think of and desire (not need) to use these words for their ordinary significance without improper motive. As a result, these words were not inherently adapted to distinguish Wyeth’s goods and services from those of other traders.

The application was filed on 13 April 2012 (prior to the 15 April 2013 amendments), so the repealed form of s41 was applicable. The Hearing Officer referred to definitions of the words “remission” and “possible” in the Macquarie Dictionary and considered the applied for mark was a rather straightforward articulation of the purpose of the relevant goods and services, arrived at by applying the commonly understood meaning of ‘possible” to the commonly understood condition “remission”.