Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – October 2013

Corporativo Internacional Mexicano, S. De R.L. De C.V v Intercontinental Great Brands LLC (formerly Kraft Foods Global brands LLC) [2013] ATMO 80 (17 October 2013)

Unsuccessful opposition by Corporativo Internacional Mexicano to registration of the trade mark shown below for biscuits and other goods in class 30.

OREO

The trade mark is a representation of the OREO cookie design which was adopted in 1952.

The Opponent argued that the trade mark is in fact a ‘quasi shape mark’ and is merely a ‘moulded design feature of a biscuit’ and ‘a decorative and functional element of the goods themselves’ which lacks distinctiveness. However, the Hearing Officer accepted the Applicant’s position that it was merely a traditional two-dimensional word and device trade mark application. It is something other than the good themselves. The inherent nature of the goods is a biscuit and the trade mark is something which can appear on a biscuit as it can appear on packaging. Indeed, the evidence confirmed it is applied to biscuits, photographs of which are then reproduced on packaging and in various other forms of advertising. It has a separate identity from the goods to which it is applied and qualifies for registration.

The Opponent also argued that the Applicant does not intend to use, or authorise the use of, the applied for image as a trade mark in relation to the goods of the application, because the image is not a sign capable of functioning as a trade mark. The Hearing Officer quickly dismissed this ground of opposition and commented that, even if the Applicant did have a case to answer on this ground, the evidence of its very significant use of its trade mark, as put into evidence, had certainly thrown light onto the existence of its intentions at the time of filing.

 

Russell Brands LLC v Christopher Russell [2013] ATMO 81 (17 October 2013)

Successful opposition by Russell Brands to registration of the trade mark shown below for apparel in class 25.

Russell & Co

The Opponent’s evidence demonstrated its use of the trade marks RUSSELL and RUSSELL ATHLETIC in Australia continuously since at least 1990 in relation to sporting apparel, including t-shirts, tank tops, pants, sweat shirts, hoodies, jackets, hats, beanies, socks and bags. The Opponent also had two prior registered composite marks containing the letter R in combination with the words RUSSELL ATHLETIC.

The Hearing Officer was satisfied that, over the years, the Opponent has used its RUSSELL ATHLETIC trade marks in a number of differing formats and scripts including fancy scripts with the addition of shield devices with or without the letter R being present. Even though the respective trade marks contain additional features such as differing devices and the words “ATHLETIC”, “DESIGNER COLLECTION” and “& CO”, the common word RUSSELL is the most distinctive and striking part of the trade marks. In particular, use of the shield device, the letter R and the additional terms in the applied for trade mark alludes to an association with the Opponent. This, along with the Opponent’s well established propensity to use its RUSSELL ATHELIC trade marks in so many different formats, is likely to further emphasise a possible connection between the Opponent’s goods and those of the Applicant. The Hearing Officer considered that, given the Opponent’s reputation in its RUSSELL ATHLETIC trade marks, 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 applied for trade mark. Consequently the s60 ground of opposition was established.

 

DNA Products Aust Pty Ltd v Botany Essentials Pty Limited [2013] ATMO 82 (21 October 2013)

Successful opposition by DNA Products to registration of the trade mark shown below for cosmetics, personal care and other goods in class 3.

DNA Serum Logo

The Opponent relied on a prior registration for the word mark DNA in class 3 owned by its CEO, Mr Tony Awad. However, the Hearing Officer did not consider the applied for composite mark was deceptively similar to it. The prominence given to the word SERUM and the double helix device were significant in reducing the risk of confusion.

However, the evidence disclosed the Opponent had been using the DNA word mark in combination with various double helix devices prior to the filing date of the applied for trade mark. Taking all of the material from the parties into account, including the evidence demonstrating non-distinctive use of the word ‘serum’ by both parties, coupled with the reputation the Opponent had established of ‘DNA’ (since 1997) and to a lesser extent of ‘DNA with a double helix device’ (since 2008), the Hearing Officer was satisfied that there is a danger of confusion in the relevant marketplace and the s60 ground of opposition was established.

 

Mastronardi Produce Ltd [2013] ATMO 83 (23 October 2013)

Application to register the trade mark ZIMA for tomatoes in class 31 was refused.

The grounds for rejection were based on the presumption that the word ZIMA is the name of a particular variety of tomato plant

The Hearing Officer was satisfied that the word ZIMA appears to be a reference to a single kind of tomato plant and its fruit. The available information strongly suggests that ZIMA is the name of a particular cultivated variety of Solanum lycopersicum which the Applicant is growing and marketing. The word ZIMA lacks any inherent adaptation to distinguish the Applicant’s tomatoes as it appears to be an appropriate description of the goods in respect of which it is to be used. The provisions of section 41(6) were applicable. Further, the evidence demonstrates that the Applicant uses the word ZIMA, and also that the buying public regard the word ZIMA, as a reference to a particular cultivated variety of orange grape tomato. The manner in which the Applicant brands its packaging serves to strengthen this view, as the tomatoes are distributed in boxes which clearly carry the Applicant’s SUNSET trade mark. As a result, the Hearing Officer considered the Applicant had failed to overcome the section 41 ground for rejection.

The s43 ground for rejection was also appropriate. The evidence demonstrated that ZIMA is used by the Applicant to describe a variety of golden grape tomato. It is clear that the buying public likewise views this term as a reference to a variety of golden grape tomato. Therefore the secondary meaning within the applied for trade mark is that of a particular variety of golden grape tomato. If it was applied to other tomatoes which are not of this variety, then the buying public is likely to be deceived or confused about the true nature of the tomatoes they are buying.

 

Apple Inc. v Experienced apples Pty Ltd [2013] ATMO 84 (25 October 2013)

Successful opposition by Apple to registration of the trade mark shown below for office machines and equipment rental in class 35.

Experienced Apples

The Hearing Officer was in no doubt that the Opponent’s trade marks would be very familiar to a significant number of Australian consumers. The Opponent has consistently used both the APPLE word mark and the Apple Logo on, or in close relation to, its entire range of goods and services since their first use in the 1970s and that the goods and services concerned, particularly in the ten years or so leading up to the filing of the applied for mark in December 2011, have enjoyed remarkable publicity, popularity and sales both in Australia and worldwide.

I am also satisfied that in light of that reputation use of the Trade Mark for the services designated by the opposed application, namely the rental of office machines and equipment, would at the very least result in a significant number of Australian consumers wondering or being left in doubt as to whether the services were being offered by, or were otherwise connected with, the Opponent. Indeed the Opponent’s evidence demonstrated that the use being made of the applied for trade mark on the Applicant’s website in March 2013 was in fact in relation to rental of the Opponent’s well known iPad, iPod and iPhone products.

In the context of the designated services the inclusion of the word “experienced” in the applied for trade carries the suggestion that the office machines and equipment offered for rental are likely to be used or reconditioned items. This is consistent with the description of the Opponent’s iPads, iPods and iPhones being offered for rent on the Applicant’s website as shown in the Opponent’s evidence. It is the word “apple(s)”, reinforced by the apple Device, which is the most memorable word in the applied for trade mark

The Hearing Officer also noted that the layout, fonts and colour scheme used on the Applicant’s website as shown in the Opponent’s evidence appear to be a very close imitation of those used on the Opponent’s websites. The presence of a “disclaimer” on the homepage of the Applicant’s website stating, “please note: We do not claim to have any affiliation with the apple company and are by (sic) no way associated with the apple company” was somewhat disingenuous.

As a result, the s60 ground of opposition was easily established and the trade mark application refused.

 

Rare Breed Distilling LLC v Lodestar Anstalt [2013] ATMO 85 (25 October 2013)

Unsuccessful oppositions by Rare Breed Distilling to applications for removal of registrations for the trade marks WILD GEESE and WILD GEESE WINES for wine in class 33 alleging non use during the 3 year period ending on 27 August 2010.

The WILD GEESE trade mark had been the subject of litigation up to the Full Federal Court. The two trade mark registrations in issue here were originally owned by Wild Geese Wines Pty Ltd and subsequently assigned to Austin Nichols & Co, Inc and then to Rare Breed Distilling LLC which subsequently merged with another company to become Skyy Spirits LLC.

The evidence disclosed that, between August 2007 and November 2009, Wild Geese Wines Pty Ltd sold around 700 bottles of wine with the label shown below affixed to the wine bottles:

Wild Geese Wines Label

The Hearing Officer was satisfied that the above use constitutes use of WILD GEESE in relation to wine and also WILD GEESE WINES in relation to wine. The addition of the word WINES to the trade mark WILD GEESE would be an addition or alteration that does not affect the identity of the trade mark. It is also possible for a label to contain several trade marks, each with their own branding function. If there was any doubt that the word WILD GEESE WINES had been used as a trade mark, it was resolved by use of the expression “Wild Geese Wines 2004 Merlot” appearing on the invoices in the evidence.

The critical issue was whether this use of the registered trade marks by Wild Geese Wines Pty Ltd was in fact ‘authorised use’ and deemed to be use of them by the registered owner of these trade marks.

On 1 June 2007, Wild Geese Wines Pty Ltd and Austin Nichols & Co, Inc. entered into a Settlement Agreement, an Assignment Agreement and License Agreement in relation to use and ownership of the relevant trade marks. The effect of those agreements was to assign ownership of these marks to Austin Nichols with Wild Geese Wines Pty Ltd retaining a perpetual exclusive license to use them in Australia. The License Agreement contained provisions for quality control but did not mention any royalties.

The Hearing Officer considered that specific instances of “exercising” control are not necessary and the existence of a licensing agreement containing specific terms on the issue of control (whether it be quality, financial or some other form of control) is sufficient in most cases and the notion of “exercising control” looks to the relationship between the trade mark owner and licensee rather than specific events or actions.

However, the Removal Applicant’s evidence effectively cast doubt as to the true state of affairs and questioned the bona fides of the licensing agreement and its terms. As a result, the onus necessarily shifted to the Opponent to provide additional evidence and effectively refute the Removal Applicant’s evidence. Ultimately, the Opponent bears the onus of satisfying the Registrar that the use was in fact ‘authorised’ in the sense contemplated under the Act.

Part of the transcript in the proceedings before the Federal Court was in evidence and the Hearing Officer formed the view that the Opponent did not desire to enter into any business relationship with Wild Geese Wines Pty Ltd, nor did it want to be identified in the marketplace as the owner or licensor of the relevant trade marks unless it provided written approval for that to happen. It was also clear that, within the relevant period, the Opponent had no financial involvement or any interest whatsoever in the business of Wild Geese Wines Pty Ltd or its use of the trade marks. Indeed, the true ownership of these marks was not evident from the labelling on the wine bottles or on the tax invoices supplied as evidence of use.

The Hearing Officer concluded that use of the marks in the relevant period was not performing the trade mark function of distinguishing the goods of the Opponent from those of other traders. In effect, Austin Nichols (and by extension the Opponent) appeared to be owner of the trade marks on the Register of Trade Marks only, and did not exercise any form of control in relation to the demonstrated use in the relevant period.

Further, the Opponent’s evidence did not satisfy the Hearing Officer that there were circumstances permitting the exercise of discretion to allow the WILD GEESE and WILD GEESE WINES trade marks to remain on the Register. While there does not appear to have been an abandonment of these trade marks, there was no evidence of a residual reputation existing in Australia. It was conceded that the use of the marks had been intermittent over the years and the last demonstrated use was the sales of wine in 2009 from wine manufactured in 2004. There was no evidence of continuous use, aside from a mention of preparations for the production of the 2010 vintage Pinot Noir.

The Hearing Officer directed the two trade marks to be removed from the Register, but this decision has been appealed to the Federal Court.

 

Woolworths Limited v Flyers Group PLC [2013] ATMO 86 (25 October 2013)

Successful opposition by Woolworths to registration of the trade mark shown below for clothing and headgear for children in class 25.

Sugar Pink

Woolworths relied on its prior registration for the word mark PINK SUGAR which covered clothing, footwear and headgear in class 25 as well as other goods in classes 14 and 18. It had previously requested the Registrar to revoke acceptance of the SUGAR PINK Logo mark, but that request was declined.

The Hearing Officer was satisfied the applied for SUGAR PINK Logo was deceptively similar to Woolworths’ registered PINK SUGAR trade mark for the same goods and upheld the opposition on the s44 ground.

 

Clinique Laboratories, LLC v Clinique La Prairie Franchising SA [2013] ATMO 87 (28 October 2013)

Partly successful opposition by Clinique Laboratories to registration of the trade mark CLINIQUE LA PRAIRIE for nutritional supplements and additives in class 5, but not for beverages in class 32.

The Opponent, which is part of the Estee Lauder group of companies, relied on the reputation derived from use of its CLINIQUE trade mark, as well as the reputation of the LA PRAIRIE trade mark owned by Beiersdorf AG.

The Hearing Officer noted the Opponent had a substantial reputation in relation to skin care preparations, cosmetics and toiletries (soap and deodorants, etc.) but the CLINIQUE trade mark had not, in its long history within Australia, been involved in brand extension. Reliance was placed on previous decisions from delegates of the Registrar for the proposition that an overwhelming and lengthy reputation in a specific industry with little evidence of brand extension in Australia must condition consumers to associate the Opponent’s products accordingly. In other words, a substantial reputation in one industry can be a double-edged sword making it less likely for consumers to be deceived or confused if a similar trade mark is used on quite different goods. The Hearing Officer considered that “those who know of the opponent will be immunized, by the very character of their knowledge, against any deception or confusion about the connection with the applicant”.

While the Hearing Officer was satisfied that use of the applied for trade mark for nutritional supplements in class 5 would be likely to deceive or cause confusion, this risk did not extend to beverages in class 32.

The Hearing Officer considered that the trade mark LA PRAIRIE had a presence in Australia, but the demonstrated reputation was not sufficiently widespread for use of the applied for CLINIQUE LA PRAIRIE trade mark to be likely to deceive or cause confusion.

 

JLIP, LLC v Greg Weige as trustee for the Jetlev Trust. [2013] ATMO 88 (29 October 2013)

Successful opposition by JLIP to registration of the trade mark JETLEV for leisure boats in class 12.

The Applicant did not file any evidence or take part in the proceedings and the Hearing Officer had no difficulty in upholding the bad faith ground of opposition based on the prior dealings between the parties.

The Hearing Officer applied the earlier bad faith tests outlined by single judges of the Federal Court in DC Comics v Cheqout Pty Ltd [2013] FCA 478 and Fry Consulting v Sports Warehouse Inc (No 2) [2012] FCA 81 .

There were negotiations in which the Applicant acknowledged the Opponent’s ownership of the JETLEV trade mark and, when those negotiations failed, the Applicant then applied to register this trade mark. The Applicant did not counter the Opponent’s evidence supporting this allegation and the Hearing Officer was able to infer the Applicant’s conduct fell short of acceptable standards of commercial behaviour.

The Hearing Officer also referred to the principle in Jones v Dunkel [1959] HCA 8 where the unexplained failure by a party to give evidence or to call a witness or tender certain documents may, in appropriate circumstances, lead to an inference that the uncalled evidence would not have assisted the party’s case.

 

Erde SAS v Erde Trailers Pty. Ltd, Anthony Brown and Godfrey Hill [2013] ATMO 89 (29 October 2013)

Successful opposition by Erde SAS to registration of the trade mark shown below for various trailers in class 12.

ERDE

The Opponent prevailed under the ownership ground with the Hearing Officer being satisfied that ERDÉ branded trailers were manufactured in France by the Opponent and that the Applicant was an official distributor for these goods in Australia. Consequently any use of this trade mark in Australia was on behalf of the Opponent, rather than being use on behalf of the Applicant itself.

This was notwithstanding the Applicant’s evidence that it spent a lot of time and effort promoting the ERDÉ branded trailers in Australia .The majority of leaflets and brochures used in the Australian market were produced locally by the Applicant because the versions supplied by the Opponent contained mistakes or were not applicable to the Australian market. The Applicant paid for all trade shows and radio advertising that took place in Australia. Further, the Opponent’s ERDÉ branded trailers could not initially be sold in Australia due to compliance issues and all the expensive, lengthy and difficult requirements to make the trailers legally roadworthy in Australia were done by the Applicant.

 

Societe Air France [2013] ATMO 90 (30 October 2013)

Application to register the trade mark shown below for a range of goods and services in classes 16, 18, 35, 36, 37, 38 and 39 was refused for lack of distinctiveness.

Air France

The Hearing Officer commented that the applied for trade mark, despite the slight shading in its colour, is merely a curved stripe. It is not a particularly complex geometric shape, but the kind of flourish which one can imagine would be formed by paint from a soft paintbrush being applied to paper. The stripe has some very slight degree of a three dimensionality resulting from the shadow effect of the colour change on the lower edge of the device, but other than that, it appears to be the ordinary kind of flourish which one is likely to see applied to highlight any number of words forming names, brands and trade marks. It is the kind of simple device which other traders are likely to think of and choose to apply to their own branding in good faith, with or without the shading effect in the colouring applied to it

The Hearing Officer acknowledged this mark was not totally devoid of distinctiveness and went on to consider the evidence of use filed in support of the application. In use, while the mark was physically separated from the word AIRFRANCE and shown in a different colour, it appears as little more than a red flourish to highlight the word. The shading which the Applicant submitted was important, was scarcely visible when viewed on the Applicant’s website in a normal font. Whether this shading was clearer in any of the other forms of advertising could not be properly assessed because the evidence from the official file was all in black and white. The evidence of use was insufficient. The Hearing Officer considered it would be generous to even allow the applied for trade mark the status of a ‘limping’ trade mark as described by Jacob J in British Sugar. It is the kind of device which cannot ‘do the job of distinguishing without first educating the public that it is a trade mark’.

 

Beck Hansen v Brauerei Beck GmbH & Co KG [2013] ATMO 91 (30 October 2013)

Successful opposition by Beck Hansen to an application for removal of its BECK trade mark registered for sound and video recordings in class 9, clothing in class 25 and entertainment services in class 41 alleging non use during the 3 year period ending on 14 May 2011.

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

Hansen’s evidence showed his career as a musician, singer-songwriter, composer and producer in the music industry since 1993, with his music having been released in Australia since 1994. The Hearing Officer had no difficulty in accepting this as establishing Australian use of the BECK trade mark during the relevant period for all the registered goods and services.