Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – June 2014

Soap & Glory Limited v Boi Trading Company Limited [2014] ATMO 47 (3 June 2014)

Successful opposition by Soap & Glory to registration of the trade mark PRIDE & GLORY for various cosmetics and personal care products in class 3.

The applicant filed evidence but did not participate in the hearing or file submissions.

The opponent had relevant registrations for its Soap & Glory and Soap & Glory 2-minute rinse trade marks and had been using its Soap & Glory trade mark in the UK for various goods including lip gloss, body butter and shampoo since 2006 and expanded into the Australian market in 2010.

The opposition was successful under the s44 ground with the hearing officer finding the applied for PRIDE & GLORY trade mark was deceptively similar to the opponent’s registered Soap & Glory trade mark.

It was significant that there were no other relevant trade marks on the Register in class 3 containing the elements “& GLORY”. The hearing officer was persuaded these elements constituted an essential or distinguishing feature of the opponent’s registered Soap & Glory mark. As a result, there is a real likelihood that a significant number of ordinary consumers will wonder, or be left in doubt, whether the parties similar class 3 goods come from the same source.

 

Nikon Corporation v Andrew Lovric [2014] ATMO 48 (4 June 2014)

Unsuccessful opposition by Nikon to registration of the trade mark IKON for various non-alcoholic beverages in class 32.

The opponent had numerous registrations for the trade mark NIKON, but none of them covered relevant class 32 goods. It had an earlier pending application for the trade mark Nikon covering the class 30 sub-headings, but that was not of benefit because the hearing officer considered the applied for IKON trade mark was not deceptively similar to NIKON.

Reliance was also placed on the opponent’s substantial Australian reputation derived from its use of the NIKON trade mark and the hearing officer was satisfied this mark had acquired a relevant reputation for cameras and associated lenses, with perhaps some degree of expansion into fields related to optics and photography. However, such goods are very different to class 32 beverages and the opponent did not have any evidence of long standing or repeated sponsorship of events.

Indeed, the hearing officer commented that the strength of the reputation of NIKON for cameras and associated lenses weighed against the likelihood of confusion with IKON for the designated beverages.

 

Hot Tuna IP Limited v Select GmbH Unternehmen fur Zeitarbeit [2014] ATMO 49 (4 June 2014)

Partly successful opposition by Hot Tuna to registration of the trade mark shown below for clothing footwear and headgear in class 25, but not for non-alcoholic beverages in class 32.

Fish Logo Select

The opponent had been selling surfwear in Australian since 1969 under its HOT TUNA trade mark and, since 1979, had also used various versions of its logo mark shown below. This logo had been registered as a trade mark for all class 25 goods since 1985. The evidence pointed to the popularity of the opponent’s surfwear waning during the latter part of the 1990s.

Fish Logo Hot Tuna

The hearing officer found in favour of the opponent under the s44 ground in finding that the applied for trade mark was deceptively similar to the opponent’s prior registered mark and covered the same goods in class 25.

Rather curiously, the hearing officer did not consider the s60 reputation ground in the context of the applicant’s claim to class 32 non-alcoholic beverages and those goods were unaffected by the decision.

 

SABMiller International B.V. v Topflight Holdings Pty Ltd. [2014] ATMO 50 (10 June 2014)

Successful opposition by SABMiller to registration of the trade mark shown below for various food and beverage goods in classes 29, 30 and 32 as well as related services in class 43. The application was filed on 12 May 2009.

Topflight logo

The opponent is a subsidiary of SABMiller plc and master licensee of the APPLETISER and GRAPETISER brands of fruit juice products which had been sold in Australia since 1982. It developed the logo shown below for its bottled and canned juices which was used in Australian since at least early 2005.

Fruit logo SAB 1

This logo was used in different ways, including with the words APPLETISER and GRAPETISER or stand alone on the bottle lids or incorporated into the shape of the bottle itself.

A slight variant of this logo as shown below was developed for the sale of canned products and used in Australia since November 2010.

Fruit logo SAB 2

The applicant had been using the applied for logo mark since November 2008 primarily for fruit beverages and food sold through its Java Juice stores in Perth, Western Australia.

The hearing officer was satisfied the opponent had acquired a very considerable Australian reputation through use of its logo for at least 4 years before the applicant filed its trade mark application. It had engaged in a considerable level of advertising with growing sales of its fruit juices. This reputation subsisted notwithstanding the use in proximity to the APPLETISER and GRAPETISER word marks. The aspects of similarity between the respective trade marks contributed to the likelihood of confusion, particularly as the respective goods are likely to pass through the same trade channels and sold in close proximity to each other. As a result, a significant number of Australian consumers would at the very least entertain a reasonable doubt as to some sort of connection between the respective trade marks.

 

The Senior’s Choice, Inc v The Seniors Choice (Australia) Pty Ltd [2014] ATMO 51 (11 June 2014)

Successful opposition by The Senior’s Choice, Inc to registration of the trade mark shown below for health care services in class 44.

Seniors Choice TM App

The hearing officer was satisfied that use of the applied for mark would be contrary to law under s42(b) because it would infringe copyright held by the opponent.

The applicant filed certain documents which did not meet formality requirements and were not accepted into evidence. The matter proceeded on the basis of the opponent’s evidence in support and the applicant did not take any part in the hearing.

The opponent is a US based business providing in-home non-medical care and companionship for the elderly.

The evidence disclosed the applicant was set up with the intention to develop a business relationship with the opponent, but that was declined.

The Senior’s Choice Logo shown below was designed in the USA in 2001 and copyright was subsequently transferred to the opponent. The hearing officer was satisfied this Logo was an original artistic work in which copyright subsisted in Australia by virtue of the Berne Convention.

Seniors Choice Logo

 

 

The heart design element in the applied for mark contained a sufficient degree of objective similarity to the monochrome Heart Logo in the opponent’s Senior’s Choice Logo and the hearing officer was satisfied the unauthorised reproduction of it would constitute copyright infringement.

 

MCD Asia Pacific LLC v Hoseyin Dogon [2014] ATMO 52 (12 June 2014)

Successful opposition by MCD (McDonald’s) to registration of the trade mark MCKebabs for kebabs in class 29.

The trade mark application was originally filed as McKebabs and subsequently amended to MCKebabs. The hearing officer did not have a problem with this amendment and considered the change from a lower case ‘c’ to an upper case ‘C’ was immaterial and did not substantially affect the identity of the applied for mark.

MCD’s evidence outlined the reputation of McDonald’s restaurants which had been trading in the USA since 1948 and in Australia since 1971, including Australian McCAFE outlets since 1993. It included use of a family of registered and unregistered trade marks with the prefix ‘Mc’ followed by the name of a food.

In earlier decisions, McDonald’s had successfully opposed registration of McSalad, McFresh, McChina and Mc Coffee, but failed in in opposition to McBrat.

The hearing officer upheld the opposition under the s60 reputation ground and noted:

I consider that confusion would inevitably arise from the Applicant’s use of the Trade Mark. The reputation of the Opponent’s McXXX trade marks is strong and the public has effectively been educated by the Opponent that it (and it alone) coins, registers and uses trade marks according to the formula ‘McFood’ where the variable element ‘Food’ might be anything from burgers to French fries to Chinese or African fare. The initial wonderment or mis-formed conclusion of a person seeing the Trade Mark for the first time that it is, or might well be, a further McFood coinage by the Opponent is, in my consideration, natural and unavoidable and this amounts to confusion. It is, as discussed above, no answer to assert that by the time that people have purchased goods sold under the Trade Mark that this confusion will have been dispelled.

Although McDonald’s was successful, the hearing officer excluded the costs item relating to the preparation of the case for hearing because McDonald’s attorneys did not comply with the direction for filing their summary submissions before the hearing.

 

Nice One Sydney’s Pty Ltd v Fantastic Holdings Ltd [2014] ATMO 53 (13 June 2014)

Unsuccessful opposition by Nice One Sydney’s to registration of a stylised version of the words The Package Deal Kings as shown below for various home ware in classes 11, 20, 24 and 27 and retailing/wholesaling services in class 35.

Package Deal Kings

The opponent filed evidence in support but did not participate in the hearing. It relied on a Victorian business name registration and use of THE PACKAGE DEAL KING from 22 September 1994 in its various stores selling furniture and other home products.

The applicant’s evidence referred to use, since 1992, of the trade mark in the form shown below by its various retail stores including Fantastic Furniture. This trade mark was altered in around 2008 to the applied for mark.

Package Deal Kings 1992

The hearing officer considered that the differences in the trade marks used by the applicant were minor and hence the applicant could rely on use of the earlier version as constituting use of the applied for mark since 1992.

Conversely, the opponent’s evidence was limited and characterised the use relied upon as being use of a business name rather than trade mark use.

It followed that the applicant had prior use and a better claim to ownership of the applied for mark, so the s58 ground of opposition failed.

Furthermore, the opponent operated in a limited geographical area around Melbourne and the hearing officer was not satisfied all of the sales revenues and advertising expenditures were attributable to use of THE PACKAGE DEAL KING. Accordingly, he was not satisfied the opponent had established a relevant reputation as at the 14 January 2010 filing date and the s60 ground of opposition also failed.

 

Franklins Pty Ltd v No Frills Pty Ltd [2014] ATMO 55 (13 June 2014)

Partly successful opposition by Franklins to an application for removal of its NO FRILLS trade mark registration for various pool and garden chemicals in class 1 alleging non use during the three year period ending on 1 January 2012.

The removal applicant had been using the trade mark NO FRILLS FERTILISERS for fertiliser products in Western Australia since August 2009. Franklins sent a cease and desist letter in January 2012 which prompted the removal applicant to file its own trade mark application and apply for partial removal of Franklins’ NO FRILLS trade mark registration so that it be restricted to exclude Western Australia.

The evidence disclosed that Franklins had been selling NO FRILLS branded fish emulsion fertiliser, potting mix and pine bark during the relevant three year period, but not in Western Australia.

Even though there was no use for pool chemicals, the hearing officer considered it appropriate to exercise discretion and allow the NO FRILLS registration to remain for all the class 1 goods, but subject to a limitation under s102 that the registration does not extend to Western Australia.

 

Bilyara Vinyards Pty Ltd v Guorong Xu [2014] ATMO 56 (13 June 2014)

Successful oppositions by Bilyara to registration of the two trade marks shown below for wine in class 33.

Kensington & Eagle Logo          K & Eagle Logo

The hearing officer acknowledged the substantial Australian reputation of the opponent’s Eagle Logo which had been used since 1969 with and without the words WOLF BLASS as shown below:

WOLF BLASS Logo          Wolf Blass Eagle

Although, in use, the opponent’s Eagle Logo was often accompanied by the words WOLF BLASS and other matter on the labels, the Eagle Logo was the common element which was especially prominent on the labels and in promotional material. The hearing officer considered the aspects of visual similarity with the applied for marks contributed to the likelihood of deception or confusion. The other matter in the applied for marks did nothing to displace the strength of recognition of the Eagle Logo and its association with the opponent. The hearing officer considered this other matter would simply indicate a ‘sub-brand extension’ to the opponent’s suite of brands that include its well known Eagle Logo.

As a result, the s60 reputation ground of opposition was established.

 

eBay Inc v Dean William Hawkins [2014] ATMO 54 (14 June 2014)

Successful opposition by eBay to registration of the trade mark shown below for retailing services in class 35.

iWantBay Logo

As an initial matter, the hearing officer refused to allow the applicant to file late further evidence as to how the applied for mark was created.

The hearing officer was satisfied the opponent had acquired a substantial Australian reputation through use of its ebay trade mark shown below for internet auctions and retail sales.

ebay logo

The applicant argued that the brand recognition of eBay reduces the likelihood of confusion and relied on an earlier 2009 decision where the opponent failed in its opposition to registration of the trade mark uBay. However, the hearing officer reviewed other cases where the strong reputation of a prior mark was considered and was not persuaded by this argument.

The hearing officer considered the expression ‘I want’ within the applied for mark focusses attention upon the word ‘Bay’ because it is the object of the sentence ‘I Want Bay’ and the word ‘Bay’ has no signification in relation to the opponent’s services apart from being the distinctive part of its very well known trade mark. It was also significant that both marks were composed of different coloured letters and start with a lower case letter immediately followed by an upper case letter. Taking all this into account, the hearing officer considered it very likely that a person seeing the applied for mark will be caused to wonder if there is some form of connection with the services offered by the opponent under its trade mark. It is not necessary for this wonderment to persist up to the point of purchase.

 

Midland Software Limited [2014] ATMO 57 (16 June 2014)

Midland Software’s application to register the trade mark PEOPLE FIRST for a range of computer ware in class 9, business and personnel services in class 35 and computer services in class 42 was refused for the class 35 and class 42 services on the ground of non-distinctiveness.

The Examiner initially raised on objection indicating that the applied for trade mark is a laudatory term describing an organisation’s commitment to its customers, indicating an emphasis on putting ‘people first’. As such, other traders should be free to use this term.

The applicant filed three rounds of submissions which did not persuade the Examiner to withdraw this objection and took the issue to a hearing.

At the hearing, the applicant argued that the applied for mark was not descriptive because the ‘people’ involved with the services are a step removed because they are customers of the applicant’s clients rather than of the applicant. Reliance was also placed on corresponding overseas trade mark registrations in the UK, Europe and Mexico as well as an accepted application in the USA.

The applicant’s attorneys also attached a document showing the manner of intended use of the applied for mark. This formed part of their submissions and was not in statutory declaration form.

The trade mark application was filed on 9 August 2012, so distinctiveness of PEOPLE FIRST had to be assessed under s41 prior to its amendment which took effect from 15 April 2013.

The hearing officer agreed with the Examiner and noted that the only additional material relied upon at the hearing was the document showing the applicant’s intended manner of use of the mark as shown below. Although this document was not properly evidence in statutory declaration form, the hearing officer considered it under Regulation 21.15(4) which provides that “the Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate”.

People First logo

 

In any event, the document showed the applied form mark rendered in a different form which included considerably different distinguishing features to just the words PEOPLE FIRST. As such, it was of little assistance. Also, the fact of registration in other jurisdictions does not provide evidence of distinctiveness under Australian law.

Without further evidence showing use of the applied for mark, the hearing officer was unable to decide whether it was capable of distinguishing the applicant’s services.

There were other objections based on prior similar marks, but the hearing officer did not consider them given his finding on the distinctiveness issue.

 

Omega SA (Omega AG) (Omega Ltd.) v Bingcheng Pan [2014] ATMO 58 (17 June 2014)

Successful opposition by Omega to registration of the trade mark shown below for various bags in class 18.

Bingcheng Pan logo

The applicant did not file any evidence or take part in the hearing.

The opponent relied on the reputation derived from use of its Omega Logo trade mark shown below in relation to wrist watches for over 110 years and, in Australia, since 1908. The hearing officer had no hesitation in stating this mark had a very strong reputation in Australia for these goods.

Omega logo

Significantly, the opponent also relied on evidence showing the strategic expansion of its business from a core offering of luxury watches into products such as fine leather goods, watch boxes, jewellery and fragrances. Indeed, there was evidence of Australian use of this mark for leather goods since 2007 and the hearing officer was also satisfied the opponent had acquired an Australian reputation for these goods.

The hearing officer considered the similarities between the respective marks are such that the concurrent use of them would be likely to confuse or deceive. A person seeing the applied for mark will be caused to wonder whether there is some form of connection with the goods offered by the opponent under its trade mark. As a result, the s60 reputation ground of opposition was established.

The opponent had a prior class 18 registration for its trade mark, but it was not necessary for the hearing officer to also consider the s44 ground of opposition.

 

BP p.l.c [2014] ATMO 59 (17 June 2014)

BP’s application to register the colour green as a trade mark for fuels in class 4, service station services in class 37 and convenience store services in class 43 was refused.

BP green

This application was filed on 15 April 2002 and has a complicated history. Its progress was impacted by the Full Federal Court decision reported at Woolworths Limited v BP plc (No 2) [2006] FCAFC 132 (4 September 2006) where the Court held that BP’s amendments to the endorsement of earlier applications filed in 1991 and 1995 to register the colour green were not allowable because the amendment from the colour green to the colour green ‘applied as the predominant colour’ significantly extended the scope of the trade mark. Further, the evidence relied upon by BP showed use of green as the dominant colour in conjunction with yellow as a subsidiary colour. That did not support registration of the colour green alone, or green as the predominant colour (because the other colour or colours were unspecified and could include a colour other than yellow).

BP had, at various times, sought to amend the endorsement of the current 2002 trade mark application which was originally filed with an endorsement limiting the trade mark to the colour green shown in the representation attached to the application. The end result was that this application came to be considered with an amended endorsement limiting the colour green to Pantone shade 348C.

Rather curiously, the decision was made on the evidence already on the written record and BP’s attorneys did not ask to appear at a hearing. It is also worth noting that all of the evidence on record was also considered in BP’s application to register a green coloured striplight which was refused on the ground of non distinctiveness and reported at Woolworths Limited v BP PLC [2013] ATMO 61. The current application for a shade of green is broader in scope than that refused application.

In light of this background, it was not surprising for the hearing officer to reach the conclusion that BP’s applied for shade of green is not to any extent inherently adapted to distinguish. Further, even though the current application was filed at a later time in 2002, the evidence relied upon did not demonstrate the particular shade of green did, by reason of use prior to the filing date, in fact distinguish BP’s goods and services at that time.

The hearing officer noted earlier comments by the Full Federal Court that survey evidence showing that consumers associate the colour green with BP does not satisfy the test of factual distinctiveness under s41(6). After considering all of the evidence, he concluded:

Notwithstanding a particular association in the public mind between the colour green and the Applicant’s service stations, I am not satisfied that the consumers would take any use of the Trade Mark in relation to all the designated goods and services as indicating those goods and services provided exclusively by the Applicant. In other words, I do not find the evidence and the various contexts in which the Trade Mark has been applied demonstrate that the Trade Mark if used alone distinguishes the goods and services.

 

Abbott Biologicals BV v Novartis AG [2014] ATMO 60 (26 June 2014)

Unsuccessful opposition by Abbott to registration of the trade mark INFLUGARD for vaccines in class 5.

Abbott relied on its earlier registration for INFLUVAX and use of this mark since at least 2010 for vaccines.

The hearing officer quickly dismissed the s60 reputation ground because Abbott did not provide any evidence of use of its INFLUVAX mark, so it could not establish any relevant Australian reputation.

When considering deceptive similarity under the s44 ground, it was relevant the prefix ‘INFLU’ in the respective mark was likely to be perceived as a contraction of the descriptive word ‘influenza’ and there were a number of other marks coexisting on the Register with this prefix. Also, the respective suffixes ‘VAX’ and ‘GARD’ are different in appearance, pronunciation and idea.

The hearing officer concluded:

In relation to medical or pharmaceutical products I consider that the prefix “INFLU” will usually give the impression of being related to “influenza” (except where the context is clearly different, such as in the word “influx”). That is not to say that I consider the respective suffixes “GARD” and “VAC” are, of themselves, distinctive features which fix themselves in the mind of the observer and differentiate the trade marks. Rather, I consider they are suffixes alluding to “guard” and “vaccine” respectively and as such are also somewhat descriptive. Nevertheless taken as wholes I consider that the trade marks, albeit all relatively descriptive, are sufficiently different. This is particularly so when viewed in the context of other trade marks on the register, wherein multiple registrations including INFLUON, INFLUCOL and INFLUPAN coexist in respect of similar goods, as do multiple registrations incorporating the prefix “FLU” (a more common abbreviation of “influenza”), also in respect of similar goods.

Additionally it ought to be noted that the relevant market for the Holder’s products consists of medical professionals trained to take time and care with the products they dispense. As noted by the delegate in Eli Lily & Co v Douglas Pharmaceuticals “Patients are not the target audience for such trade marks”.

As a result, the s44 ground of opposition based on Abbott’s prior registered INFLUVAX mark also failed.