Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – May 2014

International Awards Group LLC v Asian Advertising Festival (Spikes) Asia Pte Limited [2014] ATMO 35 (2 May 2014)

Successful opposition by International Awards Group to registration of the trade mark AME for various promotional services in class 35 and entertainment services in class 41.

The hearing officer was satisfied the opponent had a superior claim to ownership of the trade mark AME through first Australian use of this mark and AME Awards (which was regarded as substantially identical to AME) for the organisation of award competitions and ceremonies promoting advertising and marketing excellence which were the ‘same kind of thing’ as claimed by the applicant.

 

Sitecore Corporation A/S v Salesforce.com, inc [2014] ATMO 37 (5 May 2014)

Unsuccessful opposition by Sitecore to registration of the trade mark SITEFORCE for the provision of temporary use of a web-based software application for users to create websites and portals in class 42.

The opponent owned earlier registrations for the trade mark SITECORE covering similar services and closely related goods. However, the hearing officer considered that SITEFORCE was not deceptively similar to SITECORE and noted that the applicant’s services would not be impulse purchases and would be directed to consumers having a certain level of technical knowledge.

The opponent also relied on approximately four years Australian use of its SITECORE trade mark, but the hearing officer was not satisfied it had discharged the onus of establishing a reputation sufficient for there to be a likelihood of deception or confusion.

 

Citigroup Inc v City Index Limited [2014] ATMO 36 (6 May 2014)

Successful opposition by Citigroup to registration of the trade marks CITYINDEX and IFX A City Index company as shown below for financial services in class 36.

CITYINDEX Logo          IFX City Index Logo

The hearing officer was satisfied the opponent had acquired a significant Australian reputation derived from its use of CITI and supporting survey evidence pointing to a strong and significant level of association of a financial product or service starting with the name CITY with the opponent.

Although the applicant argued the opponent’s CITI mark was so well known that no one would be confused into believing that a mark with the correct spelling of the word City was associated with the opponent, the hearing officer considered this reputation would not mitigate against confusion arising and noted:

I am of the view in this instance that the reputation acquired by the Opponent’s trade marks will not militate against deception or confusion arising. The visual difference between CITI and CITY is small, and the words are phonetically identical. Notwithstanding the conceptual differences between them, when used in conjunction with other words the differences become even less significant.

In the case of the IFX trade mark, it is not particularly important whether IFX is seen to be a badge of trade origin or not, as addressed by Mr Hall in para 40, above. That this trade mark includes the words ‘A City Index Company’ as a clear indicator of trade origin is sufficient to give rise to deception or confusion when the reputation acquired by the Opponent’s CITI Trade Mark and CITI Logo Trade Mark is taken into account.

Having considered all submissions and evidence in this matter I am satisfied that as a result of the significant reputation acquired before the relevant date by at least the CITI Trade Mark and the CITI Logo Trade Mark in respect of financial services, that the use of either of the opposed trade marks would be likely to deceive or cause confusion.

 

Takeda GmbH v Actegy Limited [2014] ATMO 38 (7 May 2014)

Partly successful opposition by Takeda to registration of the trade mark REVITIVE for various goods in classes 3, 5, 9, 10 and 25.

The opponent relied on its prior registration for the trade mark REVESTIVE for pharmaceutical preparations in class5.

There was a direct overlap in the respective class 5 goods, but the hearing officer also considered the applicant’s cosmetic creams and lotions in class 3 were similar goods to pharmaceutical preparations. Given that some of the applicant’s goods in class 3 could be ordered over the counter or selected from a shelf in a pharmacy, the hearing officer was satisfied REVITIVE was too close to the registered REVESTIVE trade mark and there was a real and tangible danger of confusion.

As a result the REVITIVE application could only proceed if the goods in classes 3 and 5 were deleted.

 

Virgin Enterprises Limited v Sugar Virgin Pty Ltd [2014] ATMO 39 (7 May 2014)

Successful opposition by Virgin Enterprises to registration of the trade mark VIRGIN for various confectionary items in class 30.

The hearing officer was satisfied the opponent had established a very extensive and long standing reputation for a very broad range of goods and services internationally and in Australia. It was well known as being entrepreneurial and continually expanding its interests into new and diverse businesses. She noted:

I believe that this reputation, along with the opponent’s well established propensity to use its VIRGIN trade mark in relation to so many different goods and services each and every year, is likely to emphasise a connection between the opponent’s goods and those of the applicant. I consider that, given the reputation evidenced by the opponent in its VIRGIN trade mark, a significant number of Australian consumers would, at the very least, subscribe to a reasonable doubt as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Since the trade marks are for the same words, VIRGIN, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60. The ordinary consumer would, in my view, likely be confused or caused to wonder if the applicant’s VIRGIN trade mark had a connection with the opponent’s VIRGIN trade mark and its established commercial success. Therefore, the opponent has established a ground of opposition under the provisions of section 60.

Although the trade mark application was filed in the name of an entity which was not yet incorporated at the filing date, the hearing officer considered this did not offend against filing requirements because there was always a single person, namely Mr Hain, involved in the filing, care and conduct of all matters pertaining to the application. The subsequent amendment of the applicant name from Virgin Sugar Pty Ltd to Sugar Virgin Pty Ltd was also permissible because it was akin to correcting the name of the applicant, rather than substituting one legal entity for another.

 

Qantas Airways Limited v Luke Edwards [2014] ATMO 40 (9 May 2014)

Unsuccessful opposition by Qantas to registration of the trade mark shown below for various clothing, footwear and headwear in class 25.

kangaroo logo

Qantas relied on various prior registrations for its flying kangaroo logo as shown below, one of which covered merchandising services in class 35.

Qantas Kangaroo logo

The hearing officer considered merchandising services were closely related to the applicant’s class 25 goods. However, the respective trade marks were sufficiently different and not considered to be deceptively similar.

Rather curiously, it appears the fame of the Qantas flying kangaroo logo (which was identified as the “1984 Mark”) was considered under the s44 ground of opposition and the hearing officer also referred to the colour scheme of this logo when noting:

While I recognise that various court decisions since Woolworths have indicated the fame of a mark may be relevant to how faithfully it is recollected, “household fame” of the sort that might I think fairly be claimed for the 1984 Mark is usually seen as a factor likely to lessen the risk of deception or confusion arising due to imperfect recollection. In the present case the evidence before me of use of the 1984 Mark over the last three decades invariably shows use with a white coloured kangaroo on a red triangle background and I believe at least these prominent aspects of the mark as a whole, that is the red and white colour scheme with the bright red triangle silhouetting a white kangaroo, would be recalled by most consumers whether or not they could recall any individual features of the kangaroo itself. I do not think a significant number of people with this recollection of the Opponent’s mark, upon encountering the Opposed Mark absent those prominent aspects, is likely to confuse the marks or otherwise to wonder about any commercial connection between the Applicant’s Goods and the Opponent’s merchandising services.

In summary, the Opponent’s arguments have not satisfied me that a person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Applicant’s Goods come from the Opponent merely because the Opposed Mark contains a representation of the head and torso of a kangaroo. To establish deceptive similarity the Opponent must show there is a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. As indicated above, my conclusion is thus that the Opposed Mark is not deceptively similar to the 1984 Mark and the Opponent has accordingly not established its ground of opposition under s 44.

Qantas also relied on the extensive Australian reputation of its various flying kangaroo logo trade marks under the s60 ground of opposition, but the hearing officer was not persuaded and considered the differences in the respective trade marks, together with evidence of other traders including a representation of a kangaroo as part of their branding and the differences between dealing in class 25 goods and providing airline services, meant that confusion was unlikely.

 

Footwear Industries Pty Ltd v PT Alasmas Berkat Utama [2014] ATMO 41 (12 May 2014)

Successful opposition by Footwear Industries to registration of the Heela Logo trade mark shown below for various protective footwear in class 9.

Heela logo

The opponent manufactures and sells protective footwear under various brands including STEEL BLUE, HOWLER and KRUSHER. One model within the STEEL BLUE range is the HEELER boot.

The opponent had previously licensed the applicant to manufacture and sell protective footwear in various Asian countries under its brands. This licence was terminated when the opponent became aware the applicant, without its authorisation, was selling footwear under the names HEELER and/or HEELA and had registered HEELER as a trade mark in some of these countries.

The opponent alleged bad faith and the applicant did not file any evidence or participate in the proceedings.

The hearing officer had no problem in upholding the bad faith ground of opposition and noted:

I consider it would be ingenuous to believe the Applicant chose the Trade Mark and associated indicia independent of its knowledge of the Opponent’s marks, gained by virtue of the licence agreements. Rather I consider it likely that the Applicant consciously adopted trade marks and associated indicia for which there was some prospect of association with the Opponent’s. There are too many similarities for me to be persuaded otherwise. The circumstances amount to more than what could be considered “sharp business practice” but rather to exploitive behaviour that is “of an unscrupulous, underhand or unconscientious character”.

 

Donzenac Pty Ltd v MCV Enviroworks Pty Ltd [2014] ATMO 42 (14 May 2014)

Unsuccessful opposition by Donzenac to registration of the trade mark ENVIROBLANKET for soil and mulch in class 1 and landscaping services in class 37.

The opponent relied on its Australian reputation derived from use of its ECOBLANKET trade mark. However, the hearing officer was not satisfied there would be a likelihood of confusion, particularly due to the significant differences in the respective trade marks.

Although there was some history of dispute between the parties, the evidence did not support a finding of bad faith.

 

Pacific Brands Workwear Group Pty Ltd v J.T.C. Import/Export Pty Ltd. [2014] ATMO 43 (15 May 2014)

Successful opposition by Pacific Brands to registration of the trade mark YAKKA TOOLS for various hand tools in class 8.

The opponent relied on the reputation derived from its use of the trade marks YAKKA and HARD YAKKA for work clothing since the 1930s. The applicant contended that confusion was unlikely due to colloquial usage of the word “yakka” to refer to “work”.

Although the hearing officer considered the respective trade marks were not deceptively similar, she was persuaded by the opponent’s reputation and noted:

Given the degree of similarity between the trade marks, the opponent’s reputation in its HARD YAKKA trade marks and that the goods of interest to the opponent are likely to be sold in close proximity to the applicant’s work tools, I consider that a significant number of Australian consumers would at the very least entertain a reasonable doubt as to some sort of connection between that well-known trade mark and the applicant’s YAKKA TOOLS trade mark.

 

Laverana GmbH & Co. KG v Lalisse Australia Pty Ltd [2014] ATMO 44 (26 May 2014)

Successful opposition by Laverana to registration of the trade mark LAVIENA for skincare preparations in class 3.

The opponent relied on its prior registration for the trade mark LAVERA which covered similar class 3 goods and the hearing officer considered the applied for LAVIENA trade mark was deceptively similar to the registered LAVERA mark.

 

Novartis AG v Alpha Helix Inc. [2014] ATMO 45 (28 May 2014)

Successful opposition by Novartis to registration of the trade mark Voltagen for vaarious dietary and nutritional supplements in class 5.

The opponent relied on the Australian reputation derived from its use of the trade mark VOLTAREN for topical pain relief products since 1981.

The hearing officer was satisfied that, given this reputation and the degree of similarity between the respective trade marks, consumers would be likely to believe the Voltagen products were related products from the maker of VOLTAREN topical rub products.

 

Sears Brands LLC v Trio Group Australia Pty Ltd [2014] ATMO 46 (29 May 2014)

Successful opposition by Sears to registration of the trade mark TRIO CRAFTSMAN for various small items of metal hardware in class 6.

The opponent relied on its earlier registrations for the trade mark CRAFTSMAN which covered various tools in class 7 and hand tools in class 8.

The hearing officer was satisfied that class 6 items of metal hardware were similar goods to hand tools in class 8, but not similar to electric and power tools in class 7. He also went on to find the respective trade marks were deceptively similar and noted:

… the word CRAFTSMAN in the Trade Mark is important from a visual and aural standpoint; it is a significant element of the Trade Mark and its presence is not diminished or altered by the presence of the word TRIO at the beginning of the Trade Mark. Accordingly, I find that there is a real and tangible danger of confusion between the Trade Mark and the Opponent’s trade mark. On an overall impression, I am satisfied that they are deceptively similar.

The applicant also sought to rely on its use of TRIO with CRAFTSMAN since the early 1970s, but the hearing officer was unconvinced the evidence showed use of the trade mark in the form applied for.