Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – November 2013

Pfizer Products Inc v Global Exporters Limited [2013] ATMO 92 (4 November 2013)

Successful opposition by Pfizer to registration of the trade mark VEGETAL VIGRA for various health food supplements in class 5.

The Applicant did not file any evidence or submissions and did not participate in the hearing. The evidence filed by Pfizer included extracts from third party websites pointing to the Applicant’s interest in a product described as a pill to treat erectile dysfunction (impotence) in men.

The Hearing Officer had no difficulty in upholding the opposition on the s60 ground, namely that, because of the Australian reputation of the VIAGRA trade mark, the use of the applied for VEGETAL VIGRA trade mark for health food supplements would be likely to deceive or cause confusion.

Pfizer submitted evidence as to its Australian reputation in the VIAGRA mark and relied on its earlier successes in Federal Court cases holding that HERBAGRA and VIAGUARA were likely to be confused with VIAGRA.

The Hearing Officer was satisfied that the Applicant devised its VEGETAL VIGRA trade mark with the Pfizer’s well known VIAGRA trade mark (and the VIAGRA product) in mind. The element VIGRA had no meaning and was no more than a trifling variation of the VIAGRA mark, itself a made up word with no significance other than as the brand name of the VIAGRA product. The element VEGETAL is an ordinary English adjective defined in the (online) Macquarie Dictionary as “relating to or of the nature of plants or vegetables; vegetable”. It was accordingly entirely descriptive in the context of the Applicant’s designated goods. Consequently, it was likely for a substantial number of members of the public to believe, or at least be caused to wonder, whether the Applicant’s Goods were a herbal version of the well known VIAGRA product and would be deceived or confused in the relevant sense.

 

Siltech Pty Ltd v Quantum Corporation [2013] ATMO 93 (6 November 2013)

Partly successful opposition by Siltech to an application for removal of its QUANTUM trade mark registered for a range of building construction, repair, installation and maintenance services in class 37 and various technical and software services in class 42 alleging non use during the 3 year period ending on 13 November 2011.

The Hearing Officer was satisfied Siltech’s evidence demonstrated genuine commercial use of the QUANTUM trade mark during the relevant period for installation, repair and maintenance of heating, ventilation, air conditioning and refrigeration units, environmental control systems, as well as the repair and maintenance of optical scanners (being in the nature of office machines) and providing information about these services. The Hearing Officer was prepared to exercise discretion in permitting retention of the class 37 services relating to plumbing and drainage installations because of their similarity to environmental control systems.

As a result, the Hearing Officer directed an amendment to the class 37 specification and the deletion of class 42 from the QUANTUM registration.

 

Sanofi v Eremad Pty Ltd [2013] ATMO 94 (7 November 2013)

Successful opposition by Sanofi (represented by Gerard Skelly) to registration of the trade mark CLOVIX 75 for pharmaceutical products containing clopidogrel in class 5.

The opposition was upheld on the s60 ground, namely that, because of the Australian reputation of Sanofi’s PLAVIX trade mark, the use of the applied for CLOVIX 75 trade mark would be likely to deceive or cause confusion.

Sanofi led evidence as to substantial use of its PLAVIX trade mark since December 1998 for pharmaceuticals containing the active ingredient clopidogrel which inhibits platelet aggregation and is used to reduce the risk of heart attacks and strokes. This ingredient was protected by patent until that patent was subsequently revoked. From December 1998 up until the filing date of the CLOVIX 75 trade mark application, the only other clopidogrel pharmaceutical on the Australian market was sold under the ISCOVER brand which was commercialised by Bristol-Myers Squibb in partnership with Sanofi.

Eremad’s evidence disclosed commercial use of CLOVIX 75 since May 2010 (being after the filing date of its trade mark application) as a generic clopidogrel substitute for the PLAVIX product. There was no evidence of actual confusion, but Eremad’s evidence was silent on the reason for choosing the suffix –VIX.

Despite the involvement of trained healthcare professionals in prescribing and dispensing clopidogrel pharmaceuticals, the Hearing Officer considered that, as with the ‘AGRA’ suffix in VIAGRA and HERBAGRA, the unusual and distinctive ‘VIX’ suffix in the CLOVIX 75 trade mark, taken in the context of the longstanding reputation of the PLAVIX trade mark, will likely lead many consumers to be caused to wonder whether what are effectively identical goods so marked in fact originate from the same source.

Notwithstanding the absence of any instances of confusion in the marketplace over the past three years, the Hearing Officer was satisfied that, at the time the CLOVIX 75 application was filed, there was a real, tangible danger of a significant number of busy health care professionals as well as patients being deceived and confused. Faced with Eremad’s CLOVIX 75 trade mark in use on a generic substitute pharmaceutical, many of both categories of users, previously familiar with the Sanofi’s well-established, long-used PLAVIX trade mark for the originator drug, would very likely be caused to wonder whether their common factor, the visually and aurally memorable suffix ‘VIX’, indicated a connection of some kind between the two.

This is a rare Trade Marks Office decision in favour of an opponent in the pharmaceutical space.

 

Barton & Guestier S.A.S v Anthony Barton [2013] ATMO 95 (12 November 2013)

Unsuccessful opposition by Barton & Guestier to registration of the trade mark BARTON & BARTON for alcoholic beverages in class 33 and cellar door sales of wine in class 35.

The Opponent’s argument that BARTON & BARTON lacked sufficient distinctiveness to qualify for trade mark registration because BARTON was a common surname, was quickly dismissed. The hearing officer could see no error in the Examiner’s treatment of this as combination of two surnames which is capable of distinguishing without evidence (notwithstanding they were merely a repetition of the first).

The Opponent also relied on its prior trade mark registration for BARTON & GUESTIER covering relevant class 33 goods. However, the hearing officer considered that BARTON & BARTON was sufficiently different and not deceptively similar to BARTON & GUESTIER.

 

Stella McCartney Limited v Wong Kwaid Hua [2013] ATMO 96 (19 November 2013)

Successful opposition by Stella McCartney to registration of the trade mark shown below for various cleaning and personal care preparations in class 3, leather goods and bags in class 18 and medical and beauty care services in class 44.

St Ella New York

The opposition was upheld on the s44 ground based on the Opponent’s prior registrations for the word mark STELLA covering a broad range of personal care products in class 3.

The Hearing Officer considered these registered goods were similar to the Applicant’s class 3 goods and noted that the claimed cleaning, polishing, scouring and abrasive preparations were similar to soaps covered by the earlier STELLA registrations. The Applicant conceded that the claimed hygienic and beauty care services in class 44 were closely related to the hygienic and beauty products in class 3 covered by the STELLA registrations.

The Hearing Officer then proceeded to assess whether the applied for trade mark was deceptively similar to STELLA and found in the affirmative. It appears some weight was attributed to the applied for trade mark being derived from the forename of a founder and director of the Applicant, Dr Stella Chin. The Hearing Officer speculated that most people will not be aware that there is actually a Saint with the name Ella recognised by the Russian Orthodox Church, but did acknowledge that the abbreviation “St” will, if recognised, be pronounced and understood as the word ‘saint’ which might mitigate against confusion. However, it was significant that the crossbar of the letter “t” in the applied for mark extended across the space between the abbreviation “St” and the word “Ella”, giving a unified impression such that, on first impression, it is not at all obvious that the initial letters are the abbreviation “St”. Furthermore, the Opponent’s registered STELLA mark is rendered in block capitals and protects this word rendered in upper and lower case and in italic script forms.

Taking all these considerations into account, the Hearing Officer was satisfied the respective trade marks were likely to be confused.

Rather curiously, the Hearing Officer saw no purpose in offering the Applicant the opportunity to amend its application by excising the goods and services in classes 3 and 44 found to be similar and closely related to the class 3 goods covered by the STELLA registrations.

The Hearing Officer did not consider the evidence demonstrated the Opponent’s STELLA trade mark had acquired a sufficient Australian reputation and was not prepared to infer such reputation based on the fame of the fashion designer, Stella McCartney. Consequently the s60 and s42 grounds of opposition failed.

The other grounds of opposition argued by the Opponent were also considered and dismissed.

 

Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky. [2013] ATMO 97 (22 November 2013)

Unsuccessful opposition by Australian Boutique Markets Pty Ltd to registration of the trade mark shown below for a broad range of retail, wholesale and business services in class 35.

Boutique Markets

The Applicant’s business involved obtaining venues for markets, leasing stalls to boutique retailers and promotion of these market events. They had been trading since 2007.

The Opponent was involved in a similar field of business and had traded under the name Sydney Boutique Markets since July 2010. It had been using the trade mark shown below:

Sydney Boutique Markets

It filed an application to register this trade mark on 26 January 2011 under no. 1405672 but that application lapsed.

The Opponent argued the applied for trade mark was not sufficiently distinctive to qualify for registration because the words “boutique markets” are descriptive. However, the Hearing Officer considered the vine design was more than a mere embellishment given its comparative size and detail. When considered in its entirety, the applied for mark was sufficiently distinctive.

The Opponent also argued that use of the applied for trade mark would be contrary to law because it was not the owner of copyright in the vine design. However, it could not establish the copyright owner or that first publication occurred in Australia, so that ground failed.

Another ground of opposition relied upon by the Opponent alleged the Applicant did not have an intention to use the applied for mark because their evidence disclosed use of other variants of the mark, but the Hearing Officer quickly dismissed that argument.

The Opponent also tried to rely on its reputation derived from use of its Sydney Boutique Markets logo mark, but it only had some 5 months use before the Applicant filed its trade mark application. However, the Hearing Officer considered the evidence relied upon by the Opponent was insufficient.

 

Winemakers’ Federation of Australia v European Commission [2013] ATMOGI 1 (22 November 2013)

Successful objection by the Winemakers’ Federation of Australia, pursuant to regulation 58(5) of the Wine Australia Corporation Act 1980, to an application by the European Commission (EC) for protection in Australia of the Italian geographical indication, Prosecco.

The Deputy Registrar, Mr Michael Arblaster was satisfied the word Prosecco had been used in Australia as the name of a grape variety prior to the EC’s application on 1 April 2010 and there was no reason to exercise discretion in favour of the EC.

The Deputy Registrar noted that “if Prosecco was entered onto the Register as a GI the effect would be to prevent Australian producers from continuing to use it as the name of a grape variety. Forestalling such an outcome appears to be precisely the purpose of the statute. There are no other circumstances before me which would mitigate this conclusion. Indeed vines have been imported into Australia, planted and cultivated, and wine has been made, promoted and sold at a time when the name was not only available for use but prescribed by statute as the only available name. Moreover, for the most part, this activity and the business plans behind it took place when the name was available and in use as a variety name, not only elsewhere in the world but specifically in Italy and Europe”.

However, the Deputy Registrar did emphasise that “allowing the objection should not be interpreted as giving carte blanche to Australian producers to promote their product, based on the grape variety Prosecco, in a way which would mislead consumers about the origin of their wine. They are still subject to the strictures of the Australian Consumer Law governing misleading and deceptive conduct”.

 

Irene Notaras [2013] ATMO 98 (25 November 2013)

Unsuccessful trade mark application seeking registration of the shape of a non-electric coffee maker, one representation of which is shown below, for non-electric coffee percolators, coffee brewers and coffee makers in class 21.

ATOMIC coffee maker

The Applicant, through her business Bon Trading Company, was the sole Australian distributor for the ATOMIC brand of coffee maker originally designed in Italy by Mr Giordano Robbiati in 1946. This product has been protected by patent at least in Italy, but those patent rights had expired some time ago, so it was now in the public domain. The Applicant also asserted that, some time in the late 1980s, she acquired broader rights to the product in Australia, but those assertions were not corroborated by evidence.

The Hearing Officer considered the particular shape had some degree of inherent distinctiveness and noted “the overall shape of this bulbous coffee machine is stylized and striking, obviously made in such a way as to not only be functional, but also visually appealing to the consumer. To a certain extent, this sets it apart from its functional features and somewhat distinguishes the Trade Mark. I find that the appearance of the overall shape is to assist in distinguishing this coffee maker from those of other traders. Accordingly, I find that the Trade Mark should be assessed under the provisions of s41(5) rather than s41(6) of the Act.”

However, after then considering the evidence relied upon by the Applicant, the Hearing Officer was not satisfied it was sufficient to support registration. Much of the evidence related to the period from 1966 to 1980 when the Applicant was merely a distributor. There was relatively little evidence of the Applicant’s sales revenues and advertising expenditure after the 1980s. The more recent evidence included the Applicant’s involvement in obtaining parts and repairing the ATOMIC coffee machines. There were also some articles which mentioned the ATOMIC coffee maker is now a rarity and difficult to obtain which cast doubt on whether the coffee maker was at all times readily available for purchase in Australia from the Applicant.

The Hearing Officer referred to case law which confirmed that, in some circumstances, a foreign manufacturer’s mark may in time become exclusively associated with an Australian distributor. However, the Applicant’s evidence did not demonstrate such a case.

 

Jasco Pty (New Zealand) Limited v Kittrich Corporation [2013] ATMO 99 (27 November 2013)

Successful opposition by Jasco to registration of the trade mark CON-TACT for a range of goods in classes 9, 12, 16, 17, 19 and 20.

The Opponent prevailed under the s44 ground by relying on its prior registration for the trade mark CONTACT for “adhesive and non-adhesive plastic film and sheeting” in class 16.

Given the obvious close similarity of the respective trade marks, the issue was whether the Applicant’s goods were similar (of the same description) to the Opponent’s registered goods. The Hearing Officer noted the Opponent’s specification of goods must be given its natural and general meaning, rather than being construed by reference to the goods actually sold by the Opponent. The Hearing Officer took the view that “most of the goods of the Applicant which are in the form of adhesive plastic sheets, tapes or tabs are, in essence, the same as those of the Opponent, albeit with different uses in different classes suggested for them. The only real difference between the goods is size and purpose – in essence the goods of the parties are adhesive plastic films of various sizes and widths which may be clear, coloured, or have signs, patterns, writing or maps applied to them and which may be used for a range of purposes”. The bulk of the goods of the parties, in the Hearing Officer’s opinion, were the same goods or goods of the same description. Consequently the Opponent had established a ground of opposition in relation to most of the goods claimed by the Applicant.

Rather curiously, there were no submissions from either party concerning possible amendments to the Applicant’s specification of goods that might have left the Applicant with coverage for some restricted range of goods.