My Brilliance Pty Ltd v Brilliance Publishing Inc  ATMO 63 (2 July 2015)
Unsuccessful opposition by My Brilliance to registration of the trade mark BRILLIANCE AUDIO filed on 30 June 2010 for various electronic publications in class 9 and publishing services in class 41 which was accepted under the prior continuous use provision.
The opposition was essentially based on another party’s prior registration for BRILIANCE dating from 2003 as well as the opponent’s prior registrations dating from 2007 for various trade marks containing or consisting of the words BRILLIANCE and use by the opponent, since at least 2005, of BRILLIANCE for various personal, social and psychic services as well as incidental printed and audio visual media provided in support of these services.
The delegate was critical of the opponent’s attack on the applicant’s evidence and was satisfied this evidence established continuous use of the applied for BRILLIANCE AUDIO trade mark in Australia since 11 February 1999 for audiobook products. Since this use pre-dated the opponent’s registrations and use, the grounds of opposition based on the prior registrations (s44), ownership (s58 and 58A) and intention to use (s59) necessarily failed. The ground based on false evidence or representations (s62) also could not be sustained in light of the delegate’s assessment of the applicant’s evidence.
The s60 reputation ground of opposition operates independently of s44 and the applicant’s prior use, but the delegate was not satisfied the opponent’s evidence demonstrated a sufficient reputation as at 30 June 2010 in the BRILLIANCE mark. There was evidence of ad hoc sales of goods and services, but minimal advertising or promotional activities. To the extent any reputation was established, it was confined to personal and emotional counselling and ‘emotion mapping’ services and the hearing officer considereded it unlikely for there to be a real risk of confusion with the applicant’s goods and services.
The opponent also relied on grounds of opposition under s41 lack of distinctiveness, s42(b) contrary to law and s43 connotation being likely to cause confusion, but they were also quickly dismissed.
TWG Tea Company Pte. Ltd v Tsit Wing International Company Limited  ATMO 64 (3 July 2015)
This case involved two related matters, firstly an opposition by TWG Tea of Singapore ( the Singapore Company) to registration of a trade mark application by Tsit Wing of Hong Kong (the Hong Kong Company) to register the series of trade marks shown below filed on 12 March 2010 for tea, coffee and a broad range of other goods in class 30
and, secondly an application filed by the Singapore Company for partial removal of the Hong Kong Company’s earlier registration for the trade mark shown below dating from 16 February 2006. This registration covered the class headings in classes 30 and 32, but removal was sought only for the class 30 goods with the relevant three year period ending on 12 December 2011. The Hong Kong Company opposed this removal application.
The Singapore Company was unsuccessful on both matters.
The Singapore Company has pending applications in Australia for various trade marks containing or consisting of TWG covering tea related goods and services, the earliest of which is also coincidentally dated 12 March 2010.
These proceedings in Australia were part on an ongoing dispute regarding rights to the letters TWG. The Hong Kong Company’s business can be traced back to 1932 and it entered the Australian market in 2000. The Singapore Company’s business commenced in Singapore in 2008 with its tea products being sold through mail order channels in Australia from May 2008 and direct retail distribution arrangements in place form May 2011. Its tea products are directed to the luxury end of the market.
The Singapore Company’s Notice of Opposition to registration of the Hong Kong Company’s trade mark application initially raised 16 grounds, but this was subsequently amended to delete 7 of those grounds, including the ground based on its pending application filed on the same date This was seemingly due to considerations in disputes in other countries). Where applications for similar marks are filed on the same day, it is usual for each application to be cited against the other, but this did not occur here and the Singapore Company’s application was not cited against the Hong Kong Company’s application. Despite this failure of IP Australia, the Singapore Company could not sustain any of its remaining grounds of opposition, even though this failure could have been relied upon to revoke acceptance of the Hong Kong Company’s application.
With regard to the non-use removal application, the Hong Kong Company inadvertently omitted to properly file a confidential exhibit as part of its evidence. This evidence contained invoices dated between 2009 and 2010. However, in the circumstances of this case, the delegate declined to allow it under Regulation 21.19.
Based on the evidence, the delegate was not satisfied the Hong Kong Company had rebutted the allegation of non use. However, the delegate noted the Hong Kong Company had used variants of trade marks based upon the letters TW and TWG for tea and coffee. In light of this and the fact that the Hong Kong Company’s trade mark registration would remain for class 32 goods in any event, the delegate exercised discretion and directed this trade mark to remain on the Register for all the class 30 goods.
Not surprisingly, these matters have been appealed to the Federal Court.
Normet International Ltd  ATMO 65 (8 July 2015)
Normet filed an application to register the trade mark D-BOLT with a priority date of 9 May 2011 for bolts and metal building materials in class 6 and mining activities in class 37. This application was provisionally refused for class 6 goods on the ground that other traders use ‘d bolt’ to describe bolts having a shape of the letter ‘D’.
The delegate agreed with the Examiner that the ordinary meaning of D-BOLT is that of bolts fashioned in the shape of, or which incorporate, a ‘D’ shaped element. Consequently, it has a low level of inherent adaptation to distinguish such class 6 goods and the evidence submitted was insufficient to accept the application for class 6 goods.
Health World Limited v Endura Ltd  ATMO 66 (9 July 2015)
Unsuccessful opposition by Health World to registration of the trade mark ENDURA filed on 23 September 2011 for various apparel for cyclists in class 25.
The opponent relied on use by it, under licence from Metagenics, of the trade mark ENDURA for nutritional products since 1987, sun visors and caps since 2003, sports singlets and shirts since 2007, as well as cycle pants and cycle shirts since 2008. The opponent also promotes the ENDURA trade mark through sponsorship of various sporting events and athletes including cyclists and triathletes. The declaration was made by its attorney on information and belief.
Shortly before the hearing, the applicant sought to introduce two additional declarations and have them admitted under Regulation 21.19. One declaration alleged use of the applied for ENDURA trade mark in Australia some two years earlier than previously in evidence. In particular, an archived web page which the delegate accepted as constituting Australian use of the ENDURA trade mark by the applicant from as early as 11 December 2005. The delegate admitted this as part of the applicant’s evidence with an allowance for costs.
The delegate acknowledged the opponent’s first use in 2003 of the ENDURA trade mark for sun visors and caps. However, he did not consider these goods to be the’ same kind of thing’ as the applicant’s headwear for cyclists and could not defeat the applicant’s claim to ownership of the identical trade mark for such headwear for cyclists. Further, since the applicant could show earlier use of the ENDURA trade mark for its other class 25 apparel for cyclists, the s58 ownership ground of opposition failed.
The opponent also relied on two prior registrations for ROSSI ENDURA and ENDURA notwithstanding the owners of those prior registered marks had provided their consent to the applicant’s ENDURE trade mark application. It argued the role of the Registrar is to protect members of the public from being deceived or confused, but the delegate pointed out that the Trade Marks Register ought to be a reality of the marketplace and the trade marks in use within it. The people best placed to judge that are the traders themselves and they have provided consent. Hence the s44 ground of opposition failed.
The s60 reputation ground also failed. The delegate was satisfied the opponent had, as at 23 September 2011, established a relevant reputation for nutritional supplements, but not for clothing or headwear. The hearing officer acknowledged that it is possible for the opponent’s ENDURA trade mark to be advertised at cycling events or triathlons in relation to nutritional supplements. However “such events do not, in my experience of the world, constitute marketplaces where the goods of either party are normally bought or sold”. Consequently, most people would be unlikely to make the mental leap to connect an awareness of the Opponent’s reputation when seeing the ENDURA trade mark used in relation to specialist cycling clothing and headwear in a retail environment or on the Internet. It appears the delegate was influenced by the parties having used the ENDURA trade mark in their respective marketplaces for some time and the opponent had not tendered any evidence of confusion.
Red Bull GmbH v Total Eden Pty Ltd  ATMO 67 (20 July 2015)
Unsuccessful opposition by Red Bull to registration of the trade mark shown below filed on 12 October 2012 for various pumps in class 7 , plastic pipes in class 19 and plastic fittings for tubing and pipes in classes 17 and 20
The applicant had been using this mark since 2001.
Under the s44 ground, Red Bull relied on prior registrations for the trade mark shown below and which covered relevant goods
However, the delegate did not consider the respective marks to be deceptively similar. This was based on an orthodox comparison of the trade marks having regard to the likelihood of confusion in the context of the nature of the goods and the probable acquirers of such goods. The delegate noted the applicant’s goods are not likely to be purchased on impulse and purchasers are likely to take due care in their selection. Hence, the risk of confusion is likely to be low.
There was considerable discussion of the fame of the coloured version of the Red Bull mark (with the words rendered in the colour red and two red coloured bulls facing off against the backdrop of a golden disc). The delegate referred to the Woolworths Metro case for the proposition that it is relevant to take reputation into account under s44 where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken. The delegate was satisfied that the coloured version of the Red Bull mark is very famous and that consumers must be taken to be familiar with it. This familiarity is, if anything, likely to lessen the risk of confusion.
Under the s60 ground, Red Bull understandably relied upon the fame of the coloured version of its trade mark. However this ground also failed. Given the differences in the respective marks and the very different nature of the applicant’s goods compared to Red Bull’s reputation in energy drinks and promotional activities, the delegate was not satisfied that use of the applicant’s make would be likely to deceive, or at least cause confusion amongst, a significant or substantial number of relevant consumers. This view was, according to the delegate, reinforced by the absence of any evidence of confusion arising from the applicant’s use of its mark since 2001.
McMullen Nolan Group Pty Ltd  ATMO 68 (27 July 2015)
The applicant was successful in overcoming a non-distinctiveness objection raised during examination of its application to register the trade mark MNG filed on 21 August 2014 for a broad range of services in classes 37 and 42.
The Examiner had contended that the letters MNG are commonly used as an acronym for the words Multiple-image Network Graphics which is a file format and indicates the applicant’s software related services in classes 37 and 42 relate to software utilising or used for such graphics. The Examiner indicated an amendment to the specification to delete ‘project management of software and design’ from class 37 and ‘design and development of software’ from class 42 would enable this objection to be withdrawn.
The applicant was not prepared to make this amendment and requested reconsideration at a hearing.
The delegate agreed with the applicant that this objection was improperly taken. Following the recent High Court decision in Cantarella, the delegate noted, at paragraphs 10 -13 :
Relevant to the present matter is the reference by the majority to the ‘ordinary signification of the word, in Australia to persons who will purchase, consume or trade in the goods’. It is possible that some consumers of, and traders in, project management of software design and design and development of computer software may recognize the acronym MNG as meaning the graphics file format ‘Multiple-image Network Graphics’. However, simply identifying that a word (or acronym) may have a meaning is not sufficient to find that the Trade Mark is not prima facie capable of distinguishing. One must consider both the ‘ordinary signification’ of the word (or acronym) and also the legitimate desire of other traders to use it in relation to the same or similar services. In other words, and to draw an analogy with Cantarella, identifying the fact that a word has a particular meaning in a foreign language used in Australia is only part of the consideration.
To a certain extent, Google search results can assist in the overall determination of the inherent adaption of a trade mark to distinguish, and the Applicant has now provided further material for my consideration which she has referred to in the written submissions provided before the hearing. The material provided to me indicates that PNG (Portable Network Graphics) is the more well-known file format in this field (being an alternative to GIF or ‘Graphics Interchange Format’). MNG is apparently an animated file format derived from PNG. While still clearly in existence, it appears to be a format seldom used within the relevant industry.
To paraphrase Cantarella the information in front of me falls short of demonstrating that ‘MNG’ is understood in Australia by persons concerned with design and development of computer software; project management of software design to be directly descriptive of the character or quality of such services.
It is a further step removed in the consideration to say that an acronym with some meaning in relation to software fails to distinguish the services of project management for software design or the design and development of software. The provision of a project management service (albeit for software design) in particular is not a service in relation to which a specific (and seldom used) file format is a ‘direct reference’.