Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – March 2014

Storage King Pty Ltd and Storage King Services Pty Ltd v King Arthurs Storage [2014] ATMO 21 (3 March 2014)

Successful opposition by Storage King to registration of the trade marks KING ARTHURS word and logo as shown below for various storage services in class 39

KING ARTHURS Logo

Storage King owned prior registrations for its STORAGE KING word and logo trade marks. However the opposition was successful under the s60 ground based on the reputation derived from use of these marks for storage services since 1999.

The Applicant’s self storage business was launched in September 2011 at a location in Carrum Downs in Victoria. Storage King also operated a storage facility at Carrum Downs.

There was evidence of 8 instances of actual confusion between the two businesses at Carrum Downs. Although they related to conduct occurring after filing of the KING ARTHURS trade mark applications on 29 February 2012, but the Hearing Officer attached significant weight to them and went on to state as follows:

I note that all the examples of actual confusion provided by the Opponent occurred after the priority date. The Applicant has not objected to this evidence on this basis, but for completeness I note that while it is necessary that the rights of the parties is to be determined as at the priority date, evidence which is dated after the priority may still have a bearing on this determination. The examples of actual confusion are from only a few months after the priority date. I am satisfied that the examples of actual confusion carry significant weight in the assessment of the likelihood of deception or confusion for the purposes of s 60.

In its evidence the Opponent has provided examples of the Applicant’s trade marks in use. These examples demonstrate that the word ‘king’ which is common to all the trade marks under consideration, stands out and is a significant and memorable element of the both the opposed trade marks and the Section 60 Trade Marks. I accept the Applicant’s submissions that the words KING ARTHURS in combination create a different impression from STORAGE KING but I am not satisfied that this difference is sufficient to avoid the likelihood of deception or confusion that arises from the very significant reputation that the Opponent has in the Section 60 Marks. This is especially so when the opposed trade marks are used in the manner demonstrated in the Opponent’s evidence.

The trade marks applied for by the Applicant are not restricted to any particular colour. The evidence shows that the Applicant is consistently using particular colours in connection with its trade marks – being a particular dark shade of purple and yellow. The Opponent consistently uses a dark shade of blue and yellow in its get-up. The colours used by the Applicant, while not identical to those used by the Opponent, are somewhat similar. The use of these similar colours adds to the likelihood of confusion.

The examples of actual confusion provided by the Opponent serve to further support a view that deception or confusion was likely up to and as at the priority date. That the Applicant and Opponent are providing very similar services also adds to the likelihood of confusion.

I am satisfied that the Section 60 Marks had, before the priority date of the opposed trade marks, acquired a reputation in Australia and because of that reputation, the use of the opposed trade marks would be likely to deceive or cause confusion.

This case demonstrates that competing trade marks do not need to be deceptively similar for confusion to arise. Obviously, the evidence of actual confusion arising from the two businesses operating in close proximity at Carrum Downs was significant.

 

Creative Nail Design, Inc. v Guangzhou Bluesky Chemical Technology Co., Ltd. [2014] ATMO 22 (6 March 2014)

Successful opposition by Creative Nail Design to registration of the trade marks Bluesky Shellac and iShellac by Bluesky for nail polish in class 3.

Creative Nail Design owned a prior registration for SHELLAC covering nail polish and other nail care preparations in class 3.

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

The Hearing Officer accepted the opponent’s uncontroverted evidence to the effect that “shellac” is a resin secreted by the female lac bug on trees in the forests of India and Thailand. The opponent’s SHELLAC products did not contain this substance and “shellac” is not a normal ingredient of nail varnish.

Against this background, the Hearing Officer had no problem in finding the applied for trade marks to be deceptively similar to the opponent’s registered SHELLAC trade mark and upheld the s44 ground of opposition. The Hearing Officer stated:

The Opponent’s SHELLAC trade mark is comprised of a normal word of the English language which the Opponent asserts has no reference to the nature of the goods. This is uncontroverted by the Applicant. As the Opponent’s goods do not contain ‘lac’ or shellac, and shellac is not a normal ingredient of nail varnish, the Opponent’s trade mark should, in the absence of evidence to the contrary, be taken as alluding to the nature of the goods, or their effect, and thus functioning as a distinctive and memorable trade mark.

The word ‘shellac’ occurs prominently in the opposed trade marks and its meaning is not subsumed by the other elements of the opposed trade marks or the rendering as iShellac in opposed application 1467455. If anything, in my consideration, this particular rendering (and its placement within the first word in the trade mark iShellac by Bluesky) stresses or highlights the word ‘shellac’ rather than it alters its prominence or denotation.

The result of the use of the opposed trade marks would, I consider, cause people to wonder at some connection between the goods of the Opponent and those of the Applicant or whether there is some connection between the Applicant and Opponent. Or the commonality of the word ‘shellac’ might lead people to conclude that the products are identically formulated. These outcomes are species of confusion rather than of deception.

 

Optical 88 Limited v Optical 88 Pty Ltd [2014] ATMO 23 (6 March 2014)

Successful opposition by Optical 88 Limited of Hong Kong to registration of the trade mark shown below filed on 20 November 2006 for various optical products in class 9 and retailing of such products in class 35

Optical 88 Logo

This trade mark application was also considered in earlier litigation between the parties reported at Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 (10 December 2010) and Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130 (17 October 2011).

That earlier litigation resulted in the opponent’s registration no. 520707 in class 9 for a composite logo containing OPTICAL 88 being removed and registration no. 1083966 in classes 9 and 35 for another variant of this composite logo being restricted on the ground of non use to retailing of various eyewear and optical products in class 35. The applicant avoided infringement by establishing that its use of its OPTICAL 88 logo trade mark was good faith use of its company name notwithstanding the absence of ‘Pty Ltd’ and the addition of the logo element.

Significantly, Yates J at first instance held that the applicant could not sustain the additional defence to infringement based on being able to obtain registration of the applied for trade mark because of the likelihood of confusion arising from the opponent’s Australian reputation, but did note that the fate of that application ultimately needed to be determined by the Registrar.

By way of background, the opponent was incorporated in Hong Kong in August 1987 and operated a chain of optical stores under the name OPTICAL 88 throughout the Asia-Pacific region (but not in Australia) and in Canada. The applicant’s director, Mr Law operated an optometry business in the Sydney suburb of Campsie from 1984. This business was subsequently transferred to the applicant and traded under the OPTICAL 88 name from August 1993, with stores in Chatswood and Eastwood subsequently being opened. The Opponent became aware of the Applicant’s business in 2001, but delayed taking any action until issuing demands in October 2006 which prompted the applicant to file the opposed trade mark application.

The evidence before the Registrar was essentially a redacted version of the evidence filed in the earlier litigation with one additional declaration relied upon by the opponent which was directed to broadening and clarifying its previous survey evidence.

The survey evidence filed in the litigation established an awareness of the source of the opponent’s OPTICAL 88 business at the time of the survey in July 2009 sufficient to show that it had an extant Australian reputation as at 20 November 2006. There was also evidence pointing to the applicant’s admission of the possibility, as early as 2003, of the risk of confusion attributable to the parties having conflicting Australian reputations.

In the litigation, the applicant carried the onus of making out defences to infringement, whereas in the opposition proceeding before the Registrar, the opponent carried the onus of establishing a ground of opposition. However, the Hearing Officer was understandably influenced by the findings in the earlier litigation and was satisfied the opponent had established the s60 ground of opposition.

 

Apple Inc [2014] ATMO 24 (7 March 2014)

Apple was successful in overcoming an objection to registration of its THUNDERBOLT trade mark application in classes 9 and 42.

The examination section had previously maintained an objection based on a prior registration for THUNDERBOLT in class 9.

The validity of the objection turned on the construction of the specification goods covered by the earlier THUNDERBOLT registration. The hearing officer agreed with Apple’s narrow construction and overturned the examination objection based on the differences in the goods and services for which Apple was seeking registration.

This is a useful case for a discussion of considerations which are relevant to interpreting specifications.

 

Hearst Communications, Inc. v Bazaar International Holdings Limited [2014] ATMO 25 (11 March 2014)

Successful opposition by Hearst Communications to registration of the trade mark shown below for jewellery and other goods in class 14.

Harper's Bazaar Logo

The applicant did not file any evidence or participate in the hearing. The s60 ground of opposition based on the Australia reputation of the opponent’s Harper’s BAZAAR mark was upheld, but the hearing officer commented that the opposition would have succeeded based on any of the grounds which were pressed.

The hearing officer was in no doubt that the opponent’s Harper’s BAZAAR mark had acquired a substantial reputation in Australia. Its fashion magazine had circulated in Australia since 1998 with substantial sales revenues and circulation rates. There was also evidence of the opponent’s Harper’s BAZAAR mark being promoted at high profile fashion events specifically targeting the jewellery industry. Its magazine also contained information relating to jewellery including advertisements and the promotion of sale of jewellery. The opponent also had a Chinese language edition of its magazine which had been in circulation in Australia since January 2011 and before the filing date of the opposed application.

It was not necessary for the hearing officer to assess the reputation of the Chinese language edition of the magazine. He was satisfied the English version had acquired a substantial Australian reputation and the similarities between the opponent’s Harper’s BAZAAR word mark with the opposed mark were overwhelming.

The hearing officer was in no doubt that unauthorised use of the opposed mark would be likely to cause confusion since such use would cause a number of persons to wonder whether it might not be the case that the jewellery and magazine came from the same source.

 

Buchanan Turf Supplies Pty Limited [2014] ATMO 26 (22 March 2014)

Buchanan was unable to overcome an examination objection to registration of SIR WALTER as a trade mark for turf grass in class 31.

The hearing officer agreed with the position taken by the examination section that SIR WALTER was not to any extent inherently adapted to distinguish such turf grass notwithstanding the longstanding commercial sales of the turf variety called SIR WALTER.

The applicant had previously obtained a registration under the Plant Breeder’s Rights Act 1994 (Cth) of SIR WALTER for a variety of buffalo grass which was granted on 27 March 1998 and in force for 20 years expiring on 27 March 2018.

The hearing officer considered the general nature of plant variety rights. While this registration was in force, other traders are prevented from using Sir Walter unless licenced by Buchanan. However, once this registration expired, Sir Walter will enter the public domain and be available for anyone to exploit commercially.

Buchanan’s evidence showed that it had built up a significant reputation in its Sir Walter variety of turf. The hearing officer commented that the sales and licensing figures were extraordinary. However, from a trade mark perspective, the hearing officer took the view that the evidence showed the vast majority of use of Sir Walter was in combination with a knight device. Where these words were used alone, they tended to be used in a descriptive fashion to refer to the particular turf variety. The hearing officer was not satisfied that Sir Walter was capable of standing alone as a trade mark, rather it was a so called ‘limping mark’.

The hearing officer commented that the registered name of a plant variety is effectively the generic description of the specific plant. Sir Walter serves the single purpose of defining the name of a particular grass. As such, it is a mere description with no inherent adaptation to distinguish that grass. While a plant variety name in combination with other matter can become distinctive, the varietal name by itself cannot do so.

This case provides further reinforcement for owners of plant varietal rights to develop a different means, such as a different term or graphic device, which can function as a trade mark separately from the plant variety name. That different means can then properly become an indicator of source once the plant variety registration expires and the varietal name enters the public domain.

Buchanan has previously registered the device mark shown below which, as the hearing officer noted, is the proper trade mark and not the generic name Sir Walter

Sir W Logo

 

Federal-Mogul Corporation v Fujikura Diesel Co.Ltd. [2014] ATMO 31 (26 March 2014)

Successful opposition by Federal-Mogul to registration of the trade mark shown below for various vehicle parts in class 12.

FP Diesel Logo

The applicant did not participate in the opposition proceedings.

The hearing officer found in favour of the opponent on the s60 ground and was satisfied that its trade mark shown below had acquired an Australian reputation by virtue of its sales of a range of after market heavy duty engine parts and gaskets since 1998.

FP DIESEL Logo

When considering the likelihood of confusion issue, the hearing officer referred with approval to an earlier Registrar’s decision in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 (20 December 2012) for the proposition that:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

The hearing officer found a likelihood of confusion due to the strikingly similar visual appearance of the respective trade marks being applied to similar goods in the same markets.

 

Southcorp Brands Pty Ltd v CAN Industries Pty Lt [2014] ATMO 27 (28 March 2014)

Successful opposition by Southcorp to registration of the trade mark ‘707 estate’ for various alcoholic beverages in class 33 and import/export related services in class 35.

The applicant did not file any evidence or take part in the proceedings. The hearing officer gave his decision at the hearing.

During examination, the applicant agreed to delete class 33 from the application to overcome an objection based on the opponent’s prior registration for BIN 707 in class 33.

The opposition succeeded on the s59 ground based on the applicant’s lack of intention to use the applied for mark for the remaining services in class 35.

The hearing officer was satisfied the opponent had done enough to show a prima facie case of lack of intention to use and to shift the onus back on to the applicant. The opponent’s evidence pointed to the applicant having used the applied for mark for wine, but not for any services and to the applicant’s failure to respond to written and telephoned offers to negotiate a settlement. Intention was clearly placed in issue and the applicant chose to not respond to the challenge. An adverse inference was drawn from the applicant’s willingness to delete from its application the very same goods for which it had used the applied for mark. As a result, the hearing officer considered that any intention the applicant may have had at the filing date was to use the applied for mark for services incidental to the sale of its class 33 goods and not for the claimed class 35 services directed to third parties.