ASEP Healthcare Ltd v Multigate Medical Products Pty Ltd  ATMO 24 (3 March 2015)
Unsuccessful opposition by ASEP Healthcare to registration of the TourniTape Logo trade shown below filed on 28 February 2012 for surgical and medical equipment in class 10.
ASEP Healthcare marketed a disposable medical tourniquet under the trade mark TOURNISTRIP and appointed the applicant its exclusive Australian distributor for a period of 9 months from 19 May 2011 to 19 February 2012. However, this product was not competitively priced and ASEP Healthcare indicated its intention to allow the Australian patent application to lapse.
The s58 ownership ground failed because the hearing officer did not consider ASEP Healthcare’s TOURNISTRIP trade mark to be substantially identical to the applied for TourniTape trade mark.
The s60 reputation and s42(b) contrary to law grounds also failed because the hearing officer was not satisfied ASEP Healthcare had established a relevant Australian reputation in its TOURNISTRIP trade mark as a result of the tourniquets previously distributed by the applicant under the agreement.
The hearing officer was also not satisfied that the s62A bad faith ground had been established. In this regard, the hearing officer placed some weight on the fact that the applicant had tried to persuade ASEP Healthcare to reduce the price of its product so that it would be more competitive in the Australian market. The hearing officer concluded that while the applicant’s conduct “might be suggestive of a course of action that might amount to bad faith, it does not, on balance, establish bad faith to my satisfaction”.
Apple Inc  ATMO 25 (12 March 2015)
Apple was successful in persuading a hearing officer that its Rectangular Icon illustrated below qualifies for registration.
The trade mark application was filed on 11 January 2012 as the Australian designation of an International Registration for various electrical connectors, wires, cables and adapters for use with computers and other electronic devices. The trade mark carried the following endorsement:
“The mark consists of a horizontal line surrounded by a rectangle with rounded corners; the broken lines are not a part of the mark and serve only to show the position of the mark”
The Examination Section contended that the trade mark was a non distinctive geometric design that is commonly used. Apple filed evidence, including sales and marketing materials as well as a survey.
Section 41 in its form prior to the Raising the Bar amendments was applicable.
The hearing officer considered the rectangular element was more than a mere border and forms part of the trade mark as reflected in the endorsement. Its positioning is not solely to indicate the correct orientation of a plug vis a vis a socket. Consequently, it is not obvious why other traders would, without improper motive, need to use this on their similar goods. The applied for Rectangular Icon does not have significations or associations which preclude registration. It is figurative or non-literal, rather than representational of the cross section of an end view of a plug. Indeed the hearing officer considered that the inherent adaptation of this trade mark “is not particularly low”.
The evidence showed use of the Rectangular Icon on plugs, as well as on the dock for Apple’s iPad tablets, iPad nano dock, universal dock, digital AV adaptors and other products. The sales figures were naturally remarkable.
Balancing the inherent distinctiveness of the Rectangular Icon with the supporting evidence of use, the hearing officer was satisfied it is capable of distinguishing Apple’s goods from those of others. Consequently, he accepted the trade mark application under s41(5).
CISCO Technology Inc v Commonwealth Scientific and Industrial Research Organisation  ATMO 26 (13 March 2015)
Unsuccessful opposition by CISCO to registration of the trade mark shown below filed on 23 January 2012 for a broad range of goods and services in classes 1,2,4,5-11,16-19, 25,28, 31, 35, 37-42.
CISCO relied on its prior registrations for the trade marks shown below in classes 9,16,35,36, 38, 41 and 42:
However, the hearing officer did not regard the applied for composite mark to be deceptively similar to either of these registered marks. He considered the vertical stripes in the applied for mark are likely to be recognised as a stylised representation of Australia, whereas the design element of CISCO’s marks bears a marked resemblance to the iconic Golden Gate Bridge and CISCO is immediately recognisable as a short form of San Francisco. Additionally, the element CSIRO in the applied for mark is instantly recognisable and notorious to most Australians. The similarities between the respective marks are merely incidental and there is no significant likelihood of confusion.
It is interesting to note the hearing officer attributed reputational notoriety to CSIRO in the context of comparison of the respective trade marks under s44.
CISCO also relied on the s60 reputation ground and the hearing officer was satisfied it ha established a relevant Australian reputation in its composite CISCO & Device mark, but not in the Device by itself and independently of the word CISCO. He was not satisfied that use of the applied for composite mark would be likely to deceive or cause confusion.
Self Care Corporation Pty Ltd v Johnson & Johnson  ATMO 27 (24 March 2015)
Unsuccessful opposition by Self Care to registration of the trade mark ALLERFREE filed on 6 June 2011 for various toiletries in class 3.
Self Care relied on its prior registration for AlFREE (with the second letter being a lower case ‘L’) covering toothpaste in class 3 and use of its ALFREE mark (rendered in all upper case letters). It filed evidence in support and in reply, but did not appear at the hearing or file any submissions.
Under the s41 non-distinctiveness ground, the hearing officer noted that ALLERFREE might allude to ’allergy free’, but is it not descriptive of toiletries and the evidence did not indicate it was a term in common use. Self Care’s evidence did not establish that the ordinary signification of ALLERFREE is a word having direct reference to the character or quality of the applicant’s toiletries. There was no evidence that ‘aller’ is a known abbreviation for ‘allergy’ or that ‘allerfree’ is understood by the target audience as being directly descriptive. The hearing officer considered ALLERFREE to be clearly allusive and entitled to registration.
Under the s44 ground, the hearing officer thought it was arguable whether the applicant’s toiletries are similar goods to toothpaste, but went on to assume they were similar and compared the respective marks for deceptive similarity. He noted that similarity by virtue of both marks containing ‘free’ should, to some extent, be discounted since it is not a particularly distinctive element and is commonly used in trade marks. Also, many people are perhaps likely to view ‘Al’ as referring to the Aluminium with Self Care’s AlFREE mark suggesting toothpaste that is free from aluminium. The lower case letter ‘l’ also separates the AlFREE mark into two distinct parts which further conveys an impression different to ALLERFREE. Hence, despite having some similarities, the respective trade marks are not deceptively similar.
Self Care relied on other grounds, but there was no evidence to support them and they were quickly dismissed.
Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd  ATMO 28 (31 March 2015)
Unsuccessful opposition by Australian Homestay Network (AHN) to registration of the trade mark shown below filed on 25 January 2013 for accommodation related services in class 43
AHN relied on its prior registration for the trade mark shown below for education software in class 9 and technological education services in class 41, as well as use of this trade mark since 2007. Significantly, the evidence declared the services provided are international student placements into homestay environments which go beyond that covered by the registration.
The Applicant’s evidence disclosed use by it (or its predecessor in business) of the name Homestay Network since 1987 and use of the applied for mark since 1994 in relation to the provision of accommodation for local, national and international students within the homes of Australian families.
In late 2008, the applicant became aware of AHN’s business and sent a letter of demand on 7 May 2009. AHN’s response included reliance on the different nature of the respective businesses. The hearing officer noted this response was inconsistent with AHN’s evidence now alleging activity in the field of international student placements.
The hearing officer considered the applied for composite mark was sufficiently distinctive to qualify for registration, but noted the expression HOMESTAY NETWORK was descriptive and the dominant feature of this trade mark is the figurative device element.
The s44 ground of opposition failed because the hearing officer did not consider the respective trade marks to be deceptively similar and, in any event, the applicant’s services were not similar or closely related to those goods and services covered by AHN’s registration.
The s60 reputation ground also failed because AHN could not establish a reputation in the expression HOMESTAY NETWORK by itself and AHN was not entitled to exclusive rights in this descriptive expression. This illustrates the price to be paid by adopting an eloquently descriptive trade name.
The s58 ownership and s62A bad faith grounds of opposition also failed.
Affinity Tool Works LLC v Peter Hosking  ATMO 29 (31 March 2015)
Successful opposition by Affinity Tool Works to registration of the trade mark PORTAMATE filed on 10 November 2011 for tool stands in class 8.
The opponent acquired HTC Products, Inc (HTC) in December 2011 and asserted that HTC had sold a range of power tool accessories under the trade mark PORT A MATE into the Australian market since at least 2003.
The applicant was a former Director of Global Power Brands International Pty Ltd (GPB) and the applicant’s evidence referred to an informal arrangement between GPB and HTC from June 2009, but it was not necessary for the hearing officer to go into the precise nature of the relationship between GPB and the opponent,
Much of the opponent’s evidence referred to relevant products under the code PM, but the hearing officer was satisfied the evidence was sufficient to show prior use of the PORT A MATE trade mark for the same goods and the s58 ownership ground of opposition was established.