Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – October 2014

A2 Corporation Ltd [2014] ATMO 94 (1 October 2014)

The hearing officer upheld the non-distinctiveness raised during examination and refused an application to register the trade mark TRUE A2 for semen and animal breeding products in class 5 and veterinary and animal breeding services in class 44.

The Examiner contended that true breeding is a kind of breeding in which the parents with a particular phenotype produce offspring only with the same phenotype, while the acronym A2 is widely used to refer to one of the most common beta-casein genetic variants in dairy cattle. Accordingly TRUE A2 describes animals that have been tested and found to have the A2 beta-casein genetic variant, and therefore produce offspring only with the same phenotype.

The applicant filed evidence asserting that TRUE A2 has no meaning in livestock breeding and that the industry standard term used to denote bovine livestock and semen as being guaranteed to pass on the A2 variant gene is A2A2. The applicant also asserted that TRUE A2 in word and logo forms had been used as a trade mark since July 2012, but did not provide information as to the extent or volume of use. Corresponding trade mark applications in New Zealand, the European Union, USA, China and Korea had been accepted without encountering any objection based on descriptiveness.

Section 41 as it stood prior to the 15 April 2013 amendments was applicable. The hearing officer was not persuaded that TRUE A2 was sufficiently inherently adapted to distinguish the applicant’s goods and services. Although the nomenclature used for the specific genotype is A2A2, this does not negate the common meaning of the collocation TRUE A2 as indicating animal breeding products and services that genuinely contain or pass on only the A2 genetic trait, rather than a heterogenous or A1 trait. It has a readily apparent meaning and is likely to be desired for use by other traders.

The hearing officer considered the evidence relied on by the applicant was “scant”. The outcomes in other jurisdictions were a factor to be taken into account, but did not make up for the lack of evidence of commercial use.

 

Nikon Corporation v Nison Engineering Co Pty Ltd [2014] ATMO 95 (2 October 2014)

Unsuccessful opposition by Nikon Corporation to registration of the trade mark shown below for a range of shop display fittings, refrigeration equipment, kitchen furniture goods in classes 6, 7, 11 and 20 as well as related installation, renovation and repair services in class 37.

NISON logo

The opponent relied on its prior registrations for NIKON and the Australian reputation derived from use of its NIKON trade mark.

The opponent relied on a single declaration by its trade mark attorney and written submissions. The applicant did not file any evidence or take part in the hearing.

Under the s44 ground, the hearing officer agreed that some of the goods and services covered by the opponent’s prior NIKON registered mark were similar to some of the goods and services claimed by the applicant. However, the hearing officer did not think there was a real tangible risk of confusion due to the differences in the respective trade marks.

Under the s60 reputation ground, the hearing officer considered the opponent’s evidence demonstrated a relevant Australian reputation in cameras and their parts and accessories and agreed that consumers are likely to expect the opponent to extend use of its NIKON brand to optical and ophthalmic products, as well as precision measuring equipment, and to services associated with such goods. However, such consumers will not expect the opponent to be offering kitchen and catering equipment of the type claimed by the applicant. Given this and the differences in the respective trade marks, the hearing officer was not satisfied there is a real, tangible danger of deception or confusion.

 

Brenda Robinson v Nature’s Gift Australia Pty Ltd [2014] ATMO 96 (9 October 2014)

Successful opposition by Robinson to registration of the trade mark NATURE’S GIFT SNAP BAR for pet food in class 31.

The opponent had prior registrations for the trade marks LIVER SNAPS, SNAPS, SNAP N SHARE, NATURES PET SNAP N SHARE, SNAPZ and LIVA SNAPS which covered similar goods.

The applicant had various registrations for its NATURE’S GIFT trade mark and the evidence showed this mark functioning as a house mark with the words SNAP BAR positioned beneath and separate from this house mark on packaging. Despite the opponent’s submissions to the contrary, the hearing officer considered this manner of use was within the bounds of what is fair and normal use of the applied for combination word mark. The prominence of the element SNAP BAR within the applied for combination word mark makes it likely for it to be perceived as being related to the Opponent’s registered SNAPS and SNAPZ trade marks. The element SNAP retains its identity in this combination word mark and is likely to be perceived as indicating the opponent’s goods in ‘bar’ form.

Accordingly, the s44 ground of opposition was satisfied with the hearing officer finding the applied for NATURE’S GIFT SNAP BAR trade mark was deceptively similar to the opponent’s prior SNAPS and SNAPZ registered marks.

 

Arrow Research Corporation Pty Ltd v Kabushiki Kaisha Tokyo Torihikisho (Tokyo Stock Exchange Inc.) [2014] ATMO 97 (9 October 2014)

Unsuccessful opposition by Arrow to an application seeking partial removal of its ARROWNET registered trade mark on the ground of non use during the 3 year period ending on 22 April 2013.

The ARROWNET mark was registered for “computer software” and the removal applicant was seeking to restrict it to “computer software excluding computer software for trading financial instruments”.

The hearing officer was satisfied the opponent’s evidence demonstrated that it had the requisite intention to use the ARROWNET trade mark as at the filing date of its trade mark registration, but this had not matured into actual commercial use. There was some promotional activity in 1999 – 2001, but this was well before the relevant 3 year non use period.

The opponent could not substantiate any discretionary reason for retaining its trade mark registration for computer software generally and the balance of convenience was with the removal applicant which had applied to register a similar trade mark in class 36 and was ready to put this into commercial use.

Accordingly, the hearing officer directed the specification of registered ARROWNET trade mark to be restricted in keeping with the removal application.

 

Parish of Pokolbin Incorporated [2014] ATMO 98 (9 October 2014)

The hearing officer upheld the non-distinctiveness objection raised during examination and refused an application to register the certification trade mark PARISH OF POKOLBIN for alcoholic beverages in class 33 as well as various tourism, entertainment, accommodation and restaurant services in classes 35, 41 and 43.

The examiner noted that PARISH OF POKOLBIN is part of the land title system under which land holdings were established in the late 1880s and is therefor descriptive of a geographical area in the Hunter Region in New South Wales.

The applicant relied on evidence showing it was founded in 2010 and had been using the applied for mark since then to distinguish products and services supplied within the boundaries of the Parish Pokolbin. Also, several members of the Association had started the process to establish the Association three to four years earlier and had also been using the trade mark in that time. This evidence, in its totality, was primarily directed to wine businesses and accommodation providers.

Even though the term “parish” was somewhat archaic, it describes a geographical area and the evidence relied upon showed only some two years use before the trade mark application was filed and was insufficient to persuade the hearing officer that the applied for mark was capable of distinguishing the goods and services certified by the applicant.

 

GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited v AFT Pharmaceuticals Limited [2014] ATMO 100 (9 October 2014)

Unsuccessful opposition by GSK to registration of the trade mark PARACETAMOL OSTEO-TAB for pharmaceutical preparations in class 5.

Under the s41 ground, the hearing officer was satisfied that PARACETAMOL OSTEO-TAB, when considered in its entirety, is at least to some extent inherently adapted to distinguish the applicant’s goods but, due to the prominent placement of PARACETAMOL (an International Non-proprietary Name) in this mark, it was necessary to consider the applicant’s use of this mark from March 2013 (being after the filing date) before being satisfied it had the requisite capacity to distinguish and qualify for registration.

Under the s60 ground, the opponent’s relied on the Australian reputation derived from use of their PANADOL OSTEO trade mark since 2005. However, the hearing officer did not consider PARACETAMOL OSTEO-TAB was particularly similar to PANADOL OSTEO. The only shared element is   OSTEO which is descriptive. Also, given that the respective products were pharmacy medicines moderated by a pharmacist rather than being selected directly by the purchaser, the hearing officer was not satisfied that deception or confusion was likely to ensue amongst a significant or substantial number of relevant consumers.

The opponent also relied on the bad faith and contrary to law grounds of opposition, but the hearing officer was quite dismissive of those grounds.

 

Negro International Pty Ltd v Winstons Wine Pty Ltd [2014] ATMO 102 (17 October 2014)

Unsuccessful opposition by Negro to an application seeking partial removal of its WINSTON registered trade mark on the ground of non use during the 3 year period ending on 5 September 2011.

The WINSTONS mark was registered for “alcoholic beverages” in class 33 and the removal applicant (represented by Gerard Skelly) was seeking to restrict it to “gin”.

Negro relied on copies of invoices purporting to show use of the WINSTONS trade mark for various wines during the relevant period. However, there was no direct evidence from any customer showing such wines were ever ordered or delivered. Tellingly, the removal applicant obtained a copy of an original invoice from one of the alleged recipients, Club Italia, which was in a different format to the copy invoice relied on by Negro and showed a differently branded alcoholic beverage being supplied. The product codes for the alleged WINSTONS wines shown on this and other invoices in evidence were the same product codes for TOSO vermouth products shown on Negro’s price list. Negro argued that one seemingly “dodgy” invoice should not taint the remaining evidence, but the hearing officer found “it is incredible to believe that it is an accident that every instance of use sought to be established contains the same accidental use of a product code relating to TOSO vermouth” and concluded that all of the invoices provided by Negro should be given little or no weight.

There was no evidence of circumstances that were an obstacle to use by Negro of the WINSTONS trade mark during the relevant period and the hearing officer considered there was nothing in Negro’s evidence to justify a favourable exercise of discretion.

Accordingly, the hearing officer directed the WINSTONS trade mark registration to be restricted to “gin”.

 

Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103 (20 October 2014)

Successful opposition by Sola Tube to registration of the trade mark HEAVENLY filed on 15 June 2011 for various building materials in classes 6 and 19 and related construction, repair and installation services in class 37.

The opponent relied on evidence and written submissions. The applicant did not file any evidence or participate in the hearing.

The opposition was upheld on the s58 ownership ground. The opponent took over the manufacturing and distribution of skylights previously manufactured by Heavenly Products Pty Ltd after that company ceased operations in 2001. Heavenly Products Pty Ltd had, since July 1998, manufactured and sold skylights under the trade mark HEAVENLY SKYLIGHTS. It had also manufactured and sold tubular skylights and roof windows under various other HEAVENLY trade marks, namely HEAVENLY TUBULAR SKYLIGHTS, HEAVENLY INTELLIGENT TUBULAR SKYLIGHTS and HEAVENLY ROOF WINDOWS but the dates of this were not in evidence. Much of the evidence relied upon by the opponent was undated, but there was a product catalogue dated 1 July 2001.

The hearing officer was satisfied the evidence showed prior use of HEAVENLY as a trade mark for the same kind of goods as those covered by the HEAVENLY trade mark application. Significantly, the hearing officer also considered the claimed class 37 services were also the same kind of thing as these skylights and associated goods. As such the opponent had done enough to show it was the first user of the trade mark HEAVENLY and the applicant could not sustain his claim to ownership of this mark.

 

Supacat Limited v Caterpillar Inc [2014] ATMO 104 (23 October 2014)

Successful opposition by Supacat to an application seeking removal of its SUPACAT registered trade mark on the ground of non use during the 3 year period ending on 23 January 2012.

The SUPACAT mark was registered for “wheeled military vehicles; off-road vehicles; vehicles for use in transporting and launching boats” in class 12 and the removal applicant was seeking to remove it in its entirety.

The hearing officer was satisfied the opponent had used the SUPACAT trade mark on tender documents to Defence organisations and in advertisements in Australia within the relevant period. It was not relevant that the goods might have been selected other than by reference to the trade mark within the advertisement or tender documents.

The hearing officer went on to state that, even if he was wrong on the “use” aspect, he would exercise discretion in favour of allowing the SUPACAT trade mark to remain on the Register.

 

Renaissance Hotel Holdings Inc v Ravida Properties Pty Ltd [2014] ATMO 105 (24 October 2014)

Unsuccessful opposition by Renaissance Hotel to registration of the trade mark RENAISSANCE LIVING filed on 12 February 2009 for various aged care and retirement village services in class 43. This was a divisional trade mark application and acceptance was achieved under the ‘prior continuous use’ provision.

The opponent is owned by Marriott and acquired the RENAISSANCE hotel brand from Ramada Inns in 1997. Its RENAISSANCE branded hotels and resorts are in some 31 countries, but not in Australia.

Under the s44 ground, the opponent relied on its earlier registered mark shown below which covered hotels, motels, resorts and other types of accommodation.

RENAISSANCE logo

However, the hearing officer was not satisfied these services were similar to the applicant’s retirement village services. The opponent’s services relate to short term accommodation for tourists, visitors and business travellers, whereas the applicant’s services relate to accommodation in retirement homes and villages which is generally permanent or long term. Further, the opponent’s services are procured through travel agents, third party aggregator hotel/resort accommodation websites or directly with the opponent, whereas the applicant’s services are procured through real estate agents, retirement advisory bodies or directly with the applicant. Consequently, this ground of opposition failed.

Under the s60 ground, the hearing officer had some doubt whether the opponent had done enough to establish a relevant Australian reputation through website visits from Australia and bookings by Australian residents in RENAISSANCE branded hotels in other countries. In any event, she did not consider there would be a likelihood of confusion because of any such reputation. As discussed under the s44 ground, the hearing officer considered the essential characteristics and trade channels of the respective services differ markedly and the parties’ trade marks are not so unusual that they would necessarily be thought to originate from the same source.

 

Midmark Corporation v Ritter Concept GmbH [2014] ATMO 106 (24 October 2014)

Successful opposition by Midmark to registration of the trade mark Ritter filed on 15 October 2009 for various dental equipment in classes 10, 11 and 20. The applicant relied on the ‘prior continuous use’ provision to achieve acceptance.

The s58 ownership ground was upheld based on the opponent’s earlier use of the identical Ritter trade mark for medical examination tables, lighting, sterilizers and various cabinetry, storage units, countertops and sinks marketed to professionals in the healthcare industry via the opponent’s distributors. The opponent asserted use of this mark from 1986, but the documentary evidence was dated from 1990.

The hearing officer was satisfied this use was before the earliest use documented use of the Ritter trade mark by the applicant in Australia (even though the applicant referred to use in the 1950s and 1980s). He was also satisfied the opponent’s medical equipment was the ‘same kind of thing’ as the applicant’s dental equipment.

 

Endeva Pty Ltd. [2014] ATMO 107 (30 October 2014)

Unsuccessful objection by Endeva to a decision to revoke acceptance of its application to register the trade mark TASMAN filed on 18 December 2013 for apparel in class 25.

Winterworth Pty Ltd filed a Notice of Intention to Oppose on 8 July 2014 and subsequently filed a Statement of Grounds and Particulars on 8 August 2014. IP Australia’s notification of intention to revoke acceptance was sent to the applicant on 9 July 2014. That notification indicated the examiner had failed to take into consideration an earlier trade mark registration for “footwear” in class 25 owned by Winterworth as shown below:

UGG TASMAN logo

The hearing officer considered the TASMAN application should not have been accepted because it was deceptively similar to this earlier registered mark. She noted that “comparing the respective trade marks shows that both contain the word TASMAN which is distinctive of the goods claimed in class 25. While there are additional words and graphic devices in the registered trade mark, I do not believe that this is enough to sufficiently differentiate the trade mark from each other. In this case the applicant’s TASMAN trade mark is contained wholly within the former registration. The word TASMAN is the common striking element between the respective trade marks and the only element in the applicant’s trade mark. There is additional material in the registered trade mark but this is unlikely to prevent the respective trade marks from being seen, recalled and referred to by using the term TASMAN”.

Revocation of acceptance was also reasonable in the hearing officer’s opinion. She noted “the Registrar is not restricted in respect of the information she considers relevant in her assessment of whether to revoke. Clearly revocation on the basis of a change of opinion is utterly inappropriate, and to be avoided at all costs. However, the current case involves more than a simple change of opinion. The facts of the matter support the view that an examiner has overlooked or discounted information that, had it been properly considered, would have resulted in a ground for rejection being raised. Under the legislation as it stands, it is not necessary to identify where or how the error has occurred, only to establish that the application should not have been accepted considering all the circumstances and that it is reasonable for the Registrar to revoke acceptance of trade mark.”

Also, since Winterworth’s opposition was at a very early stage and no evidence had been filed, the hearing officer rejected the applicant’s contention that the opposition forum is more appropriate for resolution of the dispute.