Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – June 2013

Malina Schindler and Adrian Schindler v Intellectual Property Development Corporation Pty Ltd [2013] ATMO 36 (6 June 2013)

Successful opposition by the Schindlers to registration of the trade mark ZIG ZAG for beer in class 32.

The evidence disclosed the Zig Zag Brewery had originally been built in 1884 and operated under that name until 1928. It subsequently changed names and ceased brewing operations in 1958. From around 1993, the Opponents had been exploring opportunities to restore this brewery. The brewery had been listed in the NSW Heritage Register since 2001 and continued to be informally known as the Zig Zag Brewery. Historically, the local water used for brewing had particular characteristics.

The Hearing Officer did not conclude the words ZIg Zag are the name of a region, but was satisfied these words are widely accepted and connected with a particular area, enhanced by the Zig Zag Railway tourist attraction.

The Hearing Officer was satisfied that the Applicant’s use of the applied for trade mark would be contrary to law and contravene s53(eb) of the Trade Practices Act 1974 because it would constitute conduct which makes a false or misleading representation concerning the place of origin of goods. In particular, use of this mark by the Applicant would mislead or deceive (or be false or misleading as to origin) because the beer the Applicant proposes to brew is not from the Zig Zag area with water from that area having attributes particularly suited for beer making.

 

Scott Ford v MYOB Technology Pty Ltd [2013] ATMO 37 (6 June 2013)

Successful opposition by MYOB to registration of the trade mark shown below for various training services in class 41

train your own business logo

Significantly, the Applicant had previously applied to register the following trade mark:

TYOB Logo

The Opponent had acquired a substantial reputation through use since 1991 of the trade marks MYOB (including in the stylised form shown below) and MIND YOUR OWN BUSINESS in relation to financial and accounting software and related training services.

MYOB Logo

The Hearing Officer reached the conclusion that the applied for trade mark was coined by the Applicant with reference to the Opponent’s MIND YOUR OWN BUSINESS trade mark, particularly given the earlier filing of the application containing the letters TYOB in a form similar to that of the Opponent’s MYOB mark.

Given the reputation of the Opponent’s MIND YOUR OWN BUSINESS trade mark and the likelihood of the expression “train your own business” being understood as being derived from the expression “mind your own business”, the Hearing Officer considered there to be a strong associative force between the respective trade marks. There was a likelihood of confusion in the sense of persons being at least caused to wonder whether the relevant services come from the same trade source.

 

Wolverine International, L.P. v Zijian Zhang [2013] ATMO 38 (7 June 2013)

Unsuccessful opposition by Wolverine to registration of the trade mark CHAKAH for apparel in class 25.

The Opponent relied on its registration and reputation in its CHACO trade mark. However, the Hearing Officer did not consider the applied for CHAKAH trade mark to be deceptively similar to the Opponent’s trade mark. There were visual differences and, significantly, both words had geographical significance which reduced the risk of them being confused. Furthermore, the reputation of the CHACO trade mark was not sufficient to outweigh the differences in the respective marks and give rise to a real risk of confusion.

 

Slater & Gordon Pty Ltd v Ann Rosa Mary Slater [2013] ATMO 39 (11 June 2013)

Successful opposition by the Slater & Gordon law firm to registration of the trade mark SLATERS INTELLECTUAL PROPERTY LAWYERS for legal services in class 42.

The Opponent relied on the reputation derived from substantial use since the late 1980s of the trade mark SLATER & GORDON for legal services. The evidence also established the Opponent law firm was referred to in the legal profession as “Slaters” and one of the better-known legal firms in Australia, particularly in the fields of personal injury, industrial and employment law.

The Hearing Officer considered the respective trade marks were deceptively similar and, given the reputation of the SLATER & GORDON trade mark in the legal services field, use of the applied for trade mark would be likely to cause confusion.

 

MACH Systems Pty Ltd v BlueScope Steel Limited [2013] ATMO 40 (11 June 2013)

Unsuccessful opposition by MACH Systems to registration of the trade mark SOLARBOND for various metallic building materials in class 6.

The evidence disclosed the parties entered into a confidentiality agreement, but there was no clear evidence the trade mark SOLARBOND was covered by this agreement. Accordingly, The Hearing Officer considered the allegation of bad faith could not be sustained.

 

George Weston Foods Limited v Golden Circle Limited [2013] ATMO 41 (11 June 2013)

Unsuccessful opposition by George Weston to registration of the trade mark shown below for various foodstuffs and beverages in classes 5, 29, 30 and 32.

golden circle logo

The opposition was limited to specific goods, namely “pastries, fresh biscuits, bread, bread sticks, bread, pastry, snack foods in the nature of bakery products” in class 30.

The Opponent relied on its various GOLDEN Logos shown below which had been used since at least 1985 for various bakery products in similar colours and had a similar elliptical shape.

Golden 1     Golden 2     Golden 3

The Applicant had various trade mark registrations and had been using the trade mark GOLDEN CIRCLE since 1947 for various fruit foodstuffs and beverages. It had used Logo versions of this mark since 1994 with modifications in 2005 and 2009 as shown below:

golden circle 1     golden circle 2     golden circle logo

The Hearing Officer considered the applied for trade mark, when considered in its entirety, was not deceptively similar to any of the Opponent’s prior registered trade marks containing the word GOLDEN. Furthermore the extensive and longstanding reputation of not only the Opponent’s GOLDEN trade marks, but also of the Applicant’s GOLDEN CIRCLE house mark (albeit in another segment of the grocery market), would lessen the likelihood of confusion.

The Opponent also alleged the Applicant did not have an intention to use the applied for trade mark for bakery products. However, the Hearing Officer considered the Opponent’s evidence did not make out a prima facie case for lack of intention to shift the onus back to the Applicant.

 

Health World Limited [2013] ATMO 43 (12 June 2013)

Applicant successful in overturning an examination objection to registration of the trade mark OESTROEASE for various hormone preparations in class 5.

The examination objection was based on the trade mark containing OESTRO- which is similar to the International Non-proprietary Name (INN) stem ESTR- connoting pharmaceuticals containing estrogens.

The Applicant’s product contained a phytoestrogen derived from the plant Rhapontic Rhubarb and was intended for use in the treatment of menopausal symptoms as an alternative to hormone replacement therapy. Hence, rather than containing estrogen, the Applicant’s product contained compounds to ease the effects of a fall in estrogen in the human body.

The Hearing Officer considered that members of the general public are not familiar with the INN scheme and would be unlikely to perceive the presence of “oestr” as a reference to goods which necessarily contain estrogens. On the other hand, health professionals would be knowledgeable in the use of INNs and INN stems and the applied for trade mark could contain a connotation for such people.

Nonetheless, the Hearing Officer was ultimately satisfied that use of the applied for mark would not be likely to deceive or cause confusion when used for pharmaceutical or medicinal goods not containing estrogens. There were at least four other products in the market with names commencing with “Estro” which contained plant derived substances to ease the effects of menopause rather than estrogens. There were also some twenty other registered trade marks which arguably contain the INN stem “estr” in a meaningful way (as a reference to estrogen) and which had no restriction to the goods for which they may be used. The Hearing Officer considered that health professionals are familiar with menopause-related products which may or may not contain estrogens but utilise the INN stem “estr”. As a result, there was no need for the Applicant to restrict its specification as initially requested during examination.

 

Mindstore International Limited v Biofeedback International Pty Ltd [2013] ATMO 45 (12 June 2013)

Partly successful opposition by Mindstore to registration of the trade mark shown below for various training and educational services in class 41.

Mindstore logo

The opposition was unsuccessful in relation to retailing services in class 35 and therapeutic training apparatus in class 10.

The Hearing Officer was satisfied the Opponent had done enough to shift the onus back on to the Applicant to establish that it had an intention to use the applied for mark in relation to the claimed class 41 services as at the filing date. The evidence pointed to the Applicant having considered the possibility, but this did not evolve into any real and definite intention. The Hearing Officer inferred that nominating class 41 was a tactical or defensive act upon becoming aware of the Opponent’s similar business operations under the MINDSTORE trade mark in Europe.

The Hearing Officer considered the Opponent’s MINDSTORE trade mark was not substantially identical to the applied for composite mark and hence the ground of opposition based on ownership could not succeed. It was also found that the Opponent did not have a sufficient Australian reputation derived from use of its MINDSTORE trade mark as at the filing date.

There was also an allegation of bad faith, but the Hearing Officer was satisfied the Applicant had developed and used its applied for trade mark for class 10 goods and class 35 retail services before becoming aware of the Opponent’s business. Consequently this ground of opposition failed as well.

 

Louis Vuitton Malletier v WinWorld Australia Pty Ltd [2013] ATMO 46 (12 June 2013)

Successful opposition by Louis Vuitton to registration of the trade mark shown below for wine in class 33.

Auster Vuitton logo

The Hearing Officer was satisfied the Opponent’s LOUIS VUITTON trade mark had acquired a substantial Australian reputation for a range of luxury goods and that it is likely consumers seeing or hearing the applied for trade mark would be caused to wonder whether there is a connection between the respective marks, or mistakenly assume the Applicant’s goods are those of the Opponent or marketed with its authority.

 

Omega SA v Mark Robinson and Brenda Robinson [2013] ATMO 47 (13 June 2013)

Partly successful opposition by Omega to registration of the trade mark OMEGACHEF for a broad range of class 41 services.

The Opponent relied on its prior registration for OMEGA & Device shown below which covered “timekeeping of sports events; organization of sports and cultural events” in class 41.

Omega word and logo

The Hearing Officer considered the applied for trade mark was deceptively similar to the Opponent’s registered mark and the opposition was upheld in respect of the claim to “entertainment; sporting and cultural activities and events; amusement entertainment and shows”

The application could proceed provided the specification is amended to “education services, namely educating about food and cooking; providing training about food and cooking; demonstrations and teaching demonstrations about food and cooking; none of the foregoing concerning timekeeping”.

 

Highdawn Pty Ltd v John Howard [2013] ATMO 48 (13 June 2013)

Unsuccessful opposition by Highdawn to registration of the trade mark shown below for handyman repair, maintenance and installation services in class 37.

Howards hubby hire logo

The Opponent relied upon prior use and registration of its various trade marks containing or consisting of the words HIRE A HUBBY.

The Hearing Officer took the view the respective trade marks were not deceptively similar. Despite some similarity in concept behind the trade marks and use of some of the same words, the visual and aural differences result in a sufficiently different overall impression.

It appears the Hearing Officer was influenced by the expressions “Hire a Hubby” and “Hubby Hire” alluding to home handymen offered for hire to perform the repair and maintenance services traditionally the domain of hubbies (or husbands). These expressions were not particularly strong from a distinctiveness perspective and other material in the applied for trade mark had to be given due weight.

The Hearing Officer was satisfied the Opponent’s Hire A Hubby franchise business had acquired some reputation (and was critical of some of the evidence seeking to establish this), but was not convinced there would be a real and tangible danger of confusion.

 

The H.D. Lee Company, Inc v Tracey Taylor [2013] ATMO 49 (13 June 2013)

Unsuccessful opposition by H.D. Lee Company to registration of the trade marks shown below for protective clothing in class 9 and apparel in class 25.

Lady Rider 1     Lady Rider 2

The Opponent relied on prior use and registration of its various RIDERS and LEE RIDERS trade marks. There had been overseas use of LADY LEE RIDERS, but that trade mark was not used in Australia.

The Hearing Officer admitted evidence going to the state of the Trade Marks Register and other trade marks containing the word RIDER(S) which were in use in the market place. Further, it was affirmed that evidence of use after the filing date is admissible and relevant on the basis that later events may cast light upon the true position at an earlier date.

The Hearing Officer considered the applied for trade marks were not deceptively similar to any of the Opponent’s prior registered marks. There was not a likelihood of confusion merely because of the presence of the word RIDER. When considered in their totality, the respective trade marks had notable differences in overall appearance and impression. It was also relevant there were numerous other coexisting registered marks owned by other parties containing RIDER or RIDERS and the Applicant held an earlier registration for the trade mark shown below:

Lady Rider 3

It was accepted that the Opponent’s RIDERS trade marks had a substantial Australian reputation in the apparel field. Indeed, the Hearing Officer accepted these trade marks are well known among members of the Australian public. However, this reputation was not sufficient to overcome the obvious points of difference and dissimilarity between them and the applied for trade marks. Consequently, there would not be a likelihood of confusion between them.

 

Knowles Airconditioning & Plumbing Pty Ltd [2013] ATMO 42 (14 June 2013)

An application to register the trade mark RITE PRICE for various retail, installation, maintenance and repair services relating to heating and cooling systems in classes 35 and 37 was refused on the ground of non-distinctiveness.

The Applicant filed supporting evidence showing use since 1999 of RITE PRICE in the form below and as part of a business name.

Rite Price logo

Since the application was filed on 13 April 2011, it was proper to apply s41 as it was worded prior to the amendments which came into force on 15 April 2013.

The Hearing Officer affirmed the Examiner’s objection that RITE PRICE is phonetically indistinguishable from RIGHT PRICE and went on to note this expression is ordinarily used to indicate services are affordable and many traders commonly tout their goods and services as being available at the ‘right price’. Against this background, the Hearing Officer made a finding that RITE PRICE lacks any inherent adaptation to distinguish the Applicant’s services and falls for consideration under s41(6).

The Hearing Officer took the view the evidence did not show use of the words RITE PRICE on their own as a separate and distinct trade mark. Rather these words could be better characterised as a mere “limping mark”. Consequently, the Applicant’s evidence was not sufficient to satisfy the requirements of s41(6).

 

Comite International Olympique v Calcados Az aleia SA [2013] ATMO 44 (14 June 2013)

Successful opposition by the IOC to registration of the trade mark shown below for clothing, footwear and headgear in class 25.:

Olympikus logo

The Hearing Officer considered the applied for trade mark had two striking similarities to the famous OLYMPIC and Olympic Symbol (five interlaced rings) trade marks of the IOC such that consumers may be caused to wonder if the word OLYMPIKUS is some foreign language variant of the word OLYMPIC which, when combined with the three interlaced rings, indicates some connection with the Olympic Games. The risk of confusion was attributable to the combination of elements in the applied for mark.

 

Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50 (24 June 2013)

Successful opposition by Clearlight Investments to registration of the trade mark SANREMO for remote controls in class 9 and related technological and consultancy services in class 35.

San Remo is a large town or small city in Italy with a population of over 55,000. It is a popular tourist and holiday destination which is also a sizeable place in its own right and somewhere the designated goods and services might be made or offered. Consequently SANREMO was not inherently adapted to distinguish and could not qualify for registration without supporting evidence of use.

The Hearing Officer also confirmed IP Australia’s position that the amendments to s41 only apply to applications filed on or after 15 April 2013.