NetApp Inc v Trading Reference Australia Pty Limited  ATMO 61 (3 July 2014)
Unsuccessful opposition by NetApp to registration of the trade mark shown below for a broad range of goods and services in classes 9, 35, 36 and 38, particularly relating to real estate and tenants.
The opponent relied on use of its NetApp Logo trade mark shown below for data storage and management solutions. This mark had been used in the USA since 1992 and in Australia since at least 1999. It also published a monthly newsletter under the Tech OnTap trade mark and provided its customers with Data ONTAP software.
The opponent also had prior Australian trade mark registrations for NetApp, NETAPP and DATA ONTAP and argued that consumer recollection of these trade marks and the applied for trade mark will be of the letter tApp. However, the hearing officer considered this line of argument was “fundamentally flawed” and relies on an artificial dissection of the NetApp mark. The respective trade marks were not deceptively similar, so the s44 ground of opposition failed.
The hearing officer then went on to consider the s60 reputation ground of opposition which does not require trade marks to be deceptively similar. However, he took the view the reputation of the opponent’s NetApp trade mark was confined amongst IP professionals and the degree of dissimilarity between the trade marks under consideration was so great that it is unlikely for deception or confusion to arise. Consequently, this ground of opposition also failed.
Omega SA (Omega AG) (Omega Ltd) v Guru Denim Inc.  ATMO 62 (8 July 2014)
Unsuccessful opposition by Omega to registration of the trade mark shown below for various jewellery, watches and precious metal items in class 14.
The opponent relied on use and registration of its well known OMEGA word and Logo trade marks as shown below:
However, the hearing officer did not consider the applied for mark to be substantially identical with or deceptively similar to any of these registered marks. While they shared a central curve, there were significant differences even if the applied for mark is also considered from an upside down perspective, particularly as the opponent’s logos were the well known symbol for the last letter of the Greek alphabet. The hearing officer also considered that goods such as jewellery and watches are likely to be subjected to careful visual examination by any intending purchaser. Accordingly, the s44 and s58 grounds of opposition failed.
The hearing officer then considered the s60 reputation ground. Rather surprisingly, the evidence submitted by the opponent was quite weak and fell short of demonstrating a relevant reputation within Australia. As a result, this ground also failed. This is curious, particularly given the evidence filed by the opponent in its successful opposition to registration of the trade mark application filed by Bingcheng Pan as reported on 17 June 2014 was more extensive and the hearing officer in that case had no hesitation in finding the opponent’s Omega symbol mark had a very strong reputation in Australia for watches.
Lifestyle Solutions (Aust) Ltd v Care Connect Ltd  ATMO 63 (11 July 2014)
Unsuccessful opposition by Lifestyle Solutions to registration of the trade mark My Life, My Choice, My Way for a broad range of services in classes 35, 36, 37, 39, 41, 43, 44 and 45, particularly relating to aged care and welfare services. The applicant is an Australian not-for-profit organisation providing community care services and adopted the applied for mark in 2010. Its website is at http://www.careconnect.org.au/ .
The opponent relied on prior use of its MY LIFE, MY CHOICE, MY FUTURE trade mark since 2007. Its application to register this mark was filed after the opposed application. The opponent provides support services to people with disabilities through some 100 service outlets around Australia under its primary LIFESTYLE SOLUTIONS trade mark. Its website is at http://www.lifestylesolutions.org.au/ .
The s58 ownership ground of opposition failed because the hearing officer did not consider the respective trade marks to be substantially identical. He referred to the Colorado Group v Strandbags case for the proposition that the test for substantial identity in the context of ownership is influenced by the degree of inherent distinctiveness of the trade marks in issue. The hearing officer commented:
Both trade marks are nevertheless comparatively weak in terms of their inherent adaptation to distinguish when used in relation to the services of the parties: they are slogans which are more likely to be viewed as such rather than as trade marks denoting the origin of the services. The parties’ trade marks are used subordinate to the parties’ primary trade marks which must further increase the prospect that they will not be immediately recognised as denoting the origin of the services. In the context of this comparative lack of inherent adaptation, the difference between the trade marks (which if the trade marks were fully adapted to distinguish may have been de minimis) assumes a greater significance.
The s60 reputation ground of opposition also failed because the hearing officer considered the evidence relied upon by the opponent fell short of establishing a sufficient reputation to trigger this ground.
Universal Health International Pty Ltd v Universal Protein Supplements Corporation  ATMO 64 (15 July 2014)
Unsuccessful opposition by Universal Health to registration of the trade mark shown below for various sports and body building supplements in class 5. This application was accepted with a 44(3)(a) indicating the honest concurrent use provision was applied.
The applicant was represented by Gerard Skelly. The opponent was not represented at the hearing and did not file any written submissions.
The opponent had an earlier registration for the trade mark shown below covering a very broad range of health care goods and services in classes 5 and 42.
The applicant had previously applied to partially restrict the opponent’s registration on the ground of non use, but did not proceed with that application. The evidence relied upon by the opponent was essentially the evidence it filed in connection with the non use matter.
The evidence disclosed the applicant had been using the applied for mark in the USA since 1977 with Australian use since 2003 which was 6 years before filing its trade mark application. Its supplements were directed to the sports and body building end of the nutritional supplements field.
The opponent operates in the chiropractic and natural medicines field which includes the sale of homeopathic and herbal products through its business premises, but not online or through any other trade channels. These products were sold to patients following a consultation.
The hearing officer considered the applied for mark was deceptively similar to the opponent’s registered mark, but it was proper for it to proceed to registration based on honest concurrent use. Consideration was given to the traditional criteria, namely:
(1) The degree of confusion likely between the trade marks in question;
(2) Whether instances of confusion have in fact occurred;
(3) The honesty or otherwise of the concurrent use;
(4) The extent of use in duration, area and volume; and
(5) The relative inconvenience that would be caused to the respective parties if the applicant’s mark should be registered.
The hearing officer went on to consider the s60 reputation ground of opposition ( which operates independently of the honest concurrent use provision), but acknowledged that there is a lack of any evidence which can be reliably used to infer the opponent’s reputation extends beyond its immediate patients which are predominantly from the Sydney region. The opponent’s business is directed to persons and treatments which are very different to the applicant’s target market. Significantly, there is no evidence of confusion arising from the coexistence of the respective marks since 2003. As a result, this ground of opposition failed.
A G Professional Hair Care Products Ltd v Geagroup Invest SRL  ATMO 65 (16 July 2014)
Partly successful opposition by AG Professional to registration of the trade mark shown below for a broad range of goods in classes 3 and 9.
The applicant did not file any evidence or participate in the hearing.
The s44 ground prevailed with respect to the class 3 goods based on a prior registration for the trade mark shown below covering all class 3 goods and owned by Sheraton International IP, LLC:
The hearing officer considered these trade marks were deceptively similar, but were not substantially identical due to the prominence of the ampersand in the earlier registered mark.
The opponent also put the applicant’s intention to use the applied for mark in issue, but the evidence simply referred to the applicant’s website and was insufficient to establish a prima facie case and shift the onus back on to the applicant. Consequently, the s59 ground of opposition failed.
It was not necessary for the hearing officer to consider the s60 reputation ground of opposition, but he observed that the opponent’s evidence was directed to its hair care products and any reputation for such goods fell well short of establishing a likelihood of confusion in respect of the applicant’s class 9 goods.
The opposition succeeded for the class 3 goods, but the hearing officer directed the applied for mark could proceed to registration for the designated class 9 goods.
Discount Drug Stores Pty Ltd  ATMO 66 (22 July 2014)
An application to register a trade mark for the combination of colours orange and purple as shown below for pharmacy related services in classes 35 and 44 was refused.
The trade mark was described in an endorsement as follows: “The Trade Mark is a colour mark. It consists of the colour(s) PURPLE (Pantone 2612) and ORANGE (Pantone 1505) as applied to the attached representations, used in combination as shown in the representation(s) attached to the application form.”
The examination section raised an objection that the applied for mark had some inherent adaptation to distinguish, but was not sufficiently distinctive and the description of the mark did not clearly define its nature nor how it will be used in respect of the services.
The applicant did not respond to the examiner, but requested a hearing and relied on evidence filed in earlier unsuccessful trade mark applications showing use of the colours purple and orange since 2001 in the get up within its pharmacies and in advertising and promotional materials. Over the years, the applicant’s business had expanded and it currently operated some 51 pharmacies in Queensland, 15 in New South Wales, 11 in Victoria, 6 in Western Australia, 4 in Tasmania and 2 in South Australia with additional franchised pharmacies. These pharmacies traded under the name DISCOUNT DRUG STORES. There is a website at http://www.discountdrugstores.com.au/ .
The hearing officer referred to the Philmac case which is the leading case on colour marks and noted the colour combination of purple and orange was not commonly used and these colours were somewhat arbitrary. As such they possessed some inherent adaptation to distinguish, but it was necessary to assess the evidence of use before being satisfied as to the capacity of this colour combination to distinguish the applicant’s pharmacy services.
The evidence disclosed some inconsistency in the shades of purple and orange as well as use of these colours with other indicia (such as DISCOUNT DRUG STORE) which identify the applicant. While it was acknowledged that it is a commercial reality that multiple trade marks are often used together, this was more a case of a “limping trade mark”. The hearing officer concluded as follows:
In all, I am not satisfied that the Trade Mark is sufficiently inherently adapted to distinguish. When considered in combination with the evidence of the Applicant’s use of colours, I am not satisfied that the Applicant uses those colours to the extent, or with the consistency, that consumers identify them as a badge of origin, separate from the other indicia used by the Applicant in relation to the Services.
There was also some discussion of a possible amendment to the description of the mark, but the hearing officer thought it unnecessary to formulate a more precise description because the evidence fell short of that required to support registration.
Hearst Communications Inc v H.A.G. Imports Pty Ltd  ATMO 67 (30 July 2014)
Unsuccessful opposition by Hearst to registration of the trade mark COSMOPOLITAN for hand tools and other goods in class 8 and kitchen ware, dining ware and other goods in class 21.
The opponent is the publisher of COSMOPOLITAN magazine which was launched in Australia in 1973. It also publishes a variant of this magazine called COSMOPOLITAN BRIDE.
The applicant has been using COSMOPOLITAN as part of its WHITE BASICS range of MAXWELL & WILLIAMS brand of home ware since 2002.
The opponent relied on its earlier registration for the trade mark COSMOPOLITAN covering a broad range of goods in classes 9, 14, 16, 21, 24 and 25. In particular, it asserted the class 24 manchester goods were similar to the applicant’s class 21 goods, but the hearing officer disagreed and noted that the word ‘cosmopolitan’ is often associated with sophistication, worldliness and glamour, and it is highly likely both parties adopted it for that reason. Use of this word is unlikely to be attributed to one source. Consequently, the hearing officer was not satisfied that a connection between the different sets of goods would be assumed or wondered about. Consequently, the s44 ground of opposition failed. The hearing officer did comment that, even if she was wrong on this point, the applicant would satisfy the honest concurrent use provision and observed that no instances of confusion were in evidence.
On the s60 reputation ground, the hearing officer was not satisfied the reputation of the opponent’s COSMOPOLITAN brand has extended to the home ware market due to promotional activities where the opponent has aligned its COSMOPOLITAN brand with several well known home ware brands, particularly through advertisements for these types of goods in the COSMOPOLITAN BRIDE magazine. While there was some overseas evidence of extension of the COSMOPOLITAN brand to sheet sets, clothing, cosmetics and personal grooming appliances, there was no evidence of this in Australia. The absence of any evidence of actual confusion also reinforced the hearing officer’s view that confusion is unlikely and so the s60 ground also failed.
Cantarella Bros Pty Ltd v Espresso Enterprises Pty Ltd  ATMO 68 (31 July 2014)
Successful opposition by Cantarella to registration of the trade marks “Di Bella Coffee…we know coffee” and “Crop to Cup…we know coffee” for various coffee related goods and services in classes 30, 40 and 43.
The dispute was essentially over the tag line “we know coffee” which the opponent had used since August 2010 (well before filing of the opposed trade mark applications on 29 March 2012) in relation to its VITTORIA brand of coffee.
The applicant was founded in 2002 and trades under the name Di Bella Coffee and was a rival of the opponent. In 2012, it made certain allegations to the Australian Competition and Consumer Commission (ACCC) about the opponent’s sales practices which were also reported in the media. The ACCC considered there was insufficient evidence and did not take the matter any further. The applicant commenced use of the applied for marks around this time in March 2012.
It was not necessary for the hearing officer to decide whether the “we know coffee” tagline was distinctive of the opponent’s coffee. He upheld the opposition on the s62A bad faith ground.
The evidence made it clear the applicant was well aware of the opponent’s use of this tagline when it filed its trade mark applications and commenced use of these marks. The hearing officer concluded:
In all the circumstances I am satisfied that at the Priority Date the Applicant’s conduct in filing the Applications, using the formulation which guided Bennett J in DC Comics, “fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.” It is one thing to imitate a rival’s advertising campaign, but it is quite another to seek to acquire registered rights in trade marks which feature the very Tagline prominently used in that advertising. I do not think it is necessary to speculate as to whether the Applicant was motivated by a desire to provoke the Opponent, or to “piggyback” on its advertising, or to “dilute” the Tagline’s value to the Opponent, or perhaps to inhibit the Opponent’s use of it, or for some other reason, and I do not do so. Whatever may have been the Applicant’s motivation, I am satisfied that the Opponent has established its ground under s62A.