Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – September 2013

Secondment Pty Ltd v MCI Group Holdings SA [2013] ATMO 71 (5 September 2013)

Successful opposition by Secondment to an application for removal of its MCI trade mark registered for various consultancy services in class 35 alleging non use during the three year period ending on 22 July 2011.

The Removal Applicant contended that the evidence relied upon by Secondment did not show use of MCI in a trade mark sense as a badge of origin. However, the Hearing Officer did not agree with this and commented that” the acronym (or initialism) ‘MCI’ by itself is not one that other traders in the business of marketing consultancy are likely to desire to use (in an absence of an improper motive) in the ordinary course of trade. The fact that the use occurs in conjunction with the words from which the acronym arises, is not significant in this case. In the first place, there is nothing to suggest that MCI is a known acronym for the designated services, and its ambiguous nature is highlighted by the fact that not one, but three possibilities for its meaning appear below it. I am of the view that consumers will see the Trade Mark as a brand first rather than as a description of the services or as a business name.”

Even though the provision of Secondment’s services did not, in the main, occur in Australia, the Hearing Officer was satisfied that they were offered in Australia and at least one customer in Australia had enlisted the services of Secondment in the relevant period, with reference to the MCI trade mark.

 

Boehringer Ingleheim Pharma GmbH & Co . Kg v Johnson & Johnson. [2013] ATMO 72 (10 September 2013)

Unsuccessful oppositions by Boehringer Ingleheim Pharma to registration of the trade marks STARIBA and ABIRIBA for human pharmaceuticals in class 5.

The Opponent relied on its prior registration for SPIRIVA which covered pharmaceuticals. However, the Hearing Officer considered the applied for trade marks were not deceptively similar to it, particularly in the context of pharmaceuticals which circulate in specialised and restricted trade channels. Consequently, the s44 ground of opposition failed.

The SPIRIVA trade mark has acquired a significant Australian reputation in the treatment of chronic obstructive pulmonary disease. However, the Hearing Officer considered “ the respective trade marks are so dissimilar that, notwithstanding the substantial reputation for the SPIRIVA trade mark, I see no reasonable basis for consumers being confused by use of the applicant’s trade marks.” Hence, the s60 ground of opposition also failed.

 

Intellectual Property Development Company Pty Ltd v CUB Pty Ltd [2013] ATMO 73 (10 September 2013)

Unsuccessful oppositions by Intellectual Property Development Company (IPD) to registration of the trade marks BALLARAT BITTER Logo, ABBOTS, BALLARAT BERTIE, MASTHEAD and TOOTH’S for beer in class 32.

CUB filed these trade mark applications as part of its strategy in defending applications for removal of 54 of its so called “heritage” trade mark registrations.

IPD alleged bad faith and lack of intention to use , but the Hearing Officer dismissed both of these grounds.

On the bad faith ground, the Hearing Officer referred with approval to Fry Consulting Pty Ltd v Sports Warehouse Inc. (No 2) and DC Comics v Cheqout Pty Ltd and was not prepared to draw an adverse inference that filing of the trade mark applications was purely a defensive or tactical response. If any inference was to be drawn, it seems more reasonable that, as IPD sought a license from CUB for use of its prior registrations, IPD regarded CUB to be the legal owner of the relevant trade marks. As no evidence was provided to show that CUB (or a reasonable man in its shoes) shouldn’t have applied for the trade marks, the Hearing Officer was unable to ascertain any issues of bad faith inherent in the making of these applications. CUB’s conduct did not fall short of standards of acceptable commercial behaviour, nor was it conduct which is of an unscrupulous, underhand or unconscientious character. The fact that CUB had not renewed the registration of many of its brands adds some weight to the argument that the trade mark applications were for securing its heritage brands for use in future commercial releases, not for the purpose for trade mark ‘banking’ as IPD alleged. Given the surrounding circumstances, CUB was justified in applying for the registration of the trade marks.

On the lack of intention to use ground, the Hearing Officer noted established case law to the effect that, as a general principle, the act of applying for registration is taken to be prima facie evidence of an intention to use the trade mark in relation to all the goods and services listed. However, if a prima facie case is made to the contrary, the onus shifts to the Applicant to establish the requisite intention. If a person files an application to register a trade mark with an intention at the filing date only to sell the trade mark to another person, or only to thwart a registration of a trade mark by its rightful owner and/or gain a financial benefit therefrom, or only as a spoiler or blocking strategy in a trade marks dispute with another person, there can have been no intention at that date to use that trade mark as the intended use must have been in relation to goods or services and not for some other purpose. Here, there was only a mere contention of a lack of intention with nothing more substantial than argument in support of the allegation. There was nothing for CUB to respond to and no inferences could be drawn from its lack of response. CUB had described plans for future beer releases and it was reasonable to infer that such plans are truthful. The Hearing Officer was not satisfied that the onus shifted to CUB to demonstrate an intention to use the relevant trade marks. IPD made allegations and did not provide sufficient evidence to present a prima facie case and shift the onus. The Hearing Officer went on to state that, in case she was wrong on this, CUB’s review of its heritage brands in 2010 and its past and planned future heritage releases, together with its existing registrations for the same or deceptively similar trade marks, discharged any onus that might have shifted to it. Any inference potentially created by IPD’s evidence was addressed or explained by CUB. Further, it is no obstacle in itself if CUB’s primary purpose in filing for the trade marks was to prevent their use in Australia by IPD, provided CUB also had a genuine intention to use these trade marks on the goods and such an intention was found to exist.

 

CUB Pty Ltd v Elixir Signature Pty Ltd [2013] ATMO 74 (10 September 2013)

Successful oppositions by CUB to applications for removal of 54 of its heritage trade mark registrations for beer predominantly alleging non use during the three year period ending in or about May, August or November 2010. One removal application also alleged a lack of intention to use at the filing date.

These matters were heard over two days before the Deputy Registrar and two other Hearing Officers as delegates of the Registrar.

The 54 registrations related to various trade marks associated with various historical brands of CUB including the Ballarat, Tooth’s, Bulimba, NQ & Cairns, Brisbane Bitter, Abbottsford, Carlton and Richmond beer brands.

The evidence disclosed that three of the registered trademarks or variations thereof, namely for KENT OLD BROWN, TOOTH’S KB Logo and NQ Lager Logo had been used during the relevant period. However, there was also a history of CUB offering limited releases of various versions of its other heritage brands, but mostly outside of the relevant period.

The Delegates then went on to consider whether discretion could be exercised, namely whether it was reasonable not to remove the other trade marks from the Register, although they had not been used during the relevant period. When considering discretion the Registrar may take account of any sales of the registered proprietor’s goods which postdate the relevant period. The Delegates were also satisfied that some evidenced use dated immediately prior to the relevant period may also be taken into consideration in a similar way.

The issue of abandonment was also considered and, after reviewing case law, the Delegates noted that “it does appear fairly consistently from the cases that in order for a trade mark not to be taken as abandoned, there must be at least some residual reputation; some documented intention for future use or at least some slight use during the period in which the trade mark appears to have been in ‘hiatus’. From this, it appears that maintenance of a trade mark on the Register merely by paying the renewal fees but without any concomitant use over a significant number of years could result in a reasonable assumption that the trade mark has been abandoned. This is especially apt in the case where the owner cannot, does not (or will not) provide sound evidence of any use at all or any persuasive evidence of an intention to use the trade mark in respect of the goods for which it is registered.

The Delegates also considered residual reputation as well as issues relevant to balancing the private interests of the parties and the public interest. This required an assessment of CUB’s evidence relating to the long and extensive history of brewing operations associated with the heritage brands under attack.

The end result was that 3 of CUB’s registrations were allowed to remain on the Register for their full specifications, 41 registrations were allowed to remain based on an exercise of discretion, but for slightly restricted specifications (still covering beer) and 10 registrations were ordered to be removed from the Register.

 

Fin Control Systems Pty Ltd [2013] ATMO 75 (12 September 2013)

Application for registration of the trade mark shown below for surfboards and various parts, fittings and accessories in class 28 was refused on the ground of non-distinctiveness.

Fin Control

This trade mark was described as “ the trade mark consists of a pattern of three pairs of circular dots located in the rear portion of the underside of a surfboard as shown in the representation of the trade mark attached to the application form. The outline of the surfboard shown in broken lines does not form any part of the trade mark.”

The Applicant filed evidence in support of this application. Essentially since 1992 it had been involved in the development and commercialisation of a novel surfboard fin system, incorporating surfboard fin plugs and surfboard fins, enabling surfboard fins to be removeably attached to a surfboard. This system was launched under, and has ever since been sold under, the trade mark, ‘FCS’, and consequently the system has become known as the ‘FCS System’ ”. Prior to the FCS system, surfboard fins were generally integrally formed within a surfboard and thus permanently affixed to it. The FCS system provided surfers with the ability to alter the characteristics of their surfboards by allowing for surfboard fins of varying size, shape and rigidity to be attached and removed. This was achieved by providing anchor points in the surfboard, referred to as ‘fin plugs’, and a corresponding range of surfboard fins which had protruding tabs, ‘fin tabs’, that could be inserted into the fin plugs.

Despite the lengthy and widespread use of this fin system, the Hearing Officer was not satisfied that such use had resulted in the applied for trade mark, in its own right, being recognized as a trade mark and capable of distinguishing the Applicant’s goods, notwithstanding the relatively narrow market for these goods.

The supporting declarations filed as evidence did indicate an association with the Applicant, but there were only five declarations made by people who would rightly be described as experts in their field (and therefore not necessarily representative of the average surfer). The Hearing Officer considered the earlier ‘Viennetta’, ‘BP Green’ and ‘Chocolate Seahorse’ decisions which involved evidence showing an association of a sign with a trader, but nevertheless concluded that the association did not amount to recognition or use as a trade mark.

The Hearing Officer decided that the Applicant had not established it had educated its relevant market that its sign is a trade mark, nor had it established that it is likely the relevant market will recognise it as such.

 

Epiq Systems, Inc v Documatics Australia Pty Ltd [2013] ATMO 76 (20 September 2013)

Unsuccessful opposition by Epiq Systems to registration of the trade mark DOCUMATICS for software in class 9 and document management related services in class 35.

Epiq Systems alleged it had acquired an Australian reputation derived from use of its DOCUMATRIX trade mark. The evidence indicated that it is a United States software company that provides goods and services to United States clients, some of which are said to operate offices in Australia. It operated an office in Melbourne, and there was some evidence establishing trade mark use of DOCUMATRIX in Australia in 2004. However, the evidence did not demonstrate any measurable level of use of the DOCUMATRIX trade mark in Australia. Consequently, the Hearing Officer was not satisfied that Epiq Systems had established a sufficient reputation to trigger the s60 ground of opposition.

 

 SFR Holdings Inc [2013] ATMO 77 (23 September 2013)

Application to register SEADWARF PASPALUM SDX-1 as a trade mark for turf in class 31 refused for non-distinctiveness.

The Applicant had previously registered SDX-1 as a Paspalum variety under the Plant Breeder’s Rights Act 1994 (PBR Act). Its earlier application to register SEADWARF as a trade mark also encountered a non-distinctive objection and was allowed to lapse. The word SEADWARF is recorded on the Australian PBR record as an official ‘trade reference’ in respect of the variety SDX-1.

The Hearing Officer reviewed the PBR Act and noted it gives exclusive rights to do certain things in respect of the plant variety during the life time of the PBR grant which could be seen as a de facto right to claim the name of the variety and/or its synonym as a trade mark. However, the registered name of the variety or the synonym by which it is to be known in the trade serves a single purpose and that is to describe the plant in respect of which the names are to be applied. They are effectively generic descriptions of the specific plant.

The applied for trade mark was composed of a registered variety name, the trade name for the same plant ( as recorded on the PBR register) and the name of the genus of grass in respect of which the two previously mentioned names were to be applied. This combination of words served the single purpose of defining the particular grass the name refers to and was a mere description of the relevant goods with no inherent adaptation to distinguish those goods.

The Applicant could be characterised as the guardian of the names applied to its particular Paspalum plant for the term of the PBR grant. After that date it loses the right to restrict use of either of the names it has chosen to enter upon the PBR register in respect of the specific Paspalum plant. Trade mark registration is inappropriate because it would hamper use of those names by other interested parties after expiry of the PBR grant.

 

Dennis Porlaje v Akuma Sports Ltd [2013] ATMO 78 (23 September 2013)

Unsuccessful opposition by Dennis Porlage to an application for removal of the trade mark AKUMA registered for clothing, footwear and headgear in class 25 alleging non use during the three year period ending on 6 January 2012.

The Hearing Officer noted inconsistencies and ambiguities in the evidence and formed the view that the invoices relied upon by Mr Porlaje appear to have been contrived. There was a lack of any actual commercial use of the AKUMA trade mark in the relevant period and Mr Porlaje had not rebutted the allegation of non-use. Consequently this trade mark was to be removed from the Register.

 

Virgin Enterprises Ltd v Agripower Australia Ltd [2013] ATMO 79 (24 September 2013)

Partly successful opposition by Virgin Enterprises to registration of the trade mark VIRGIN GREEN for various goods and services in classes 1, 36 and 42 relating to carbon offsetting and sequestration.

The Opponent is a UK company which owns all the trade mark applications and registrations for the Virgin group of companies (‘the Virgin Group’) of which the entrepreneur Sir Richard Branson is the Chairman. A substantial amount of evidence was filed relevant to establishing the Australian reputation of its various VIRGIN trade marks across a broad range of goods and services.

The evidence disclosed that Sir Richard Branson and/or the Virgin Group have undertaken a number of environmental initiatives from 2006, some of which utilise the Virgin name. These initiatives include ‘The Global Green Campaign’ aimed at reducing fuel emissions (from which Virgin Green Fund, described below, derived), ‘Virgin Unite’ focused upon the social and environmental impact of businesses, ‘The Carbon War Room’ focused upon an entrepreneurial solution to climate change, and ‘The Virgin Earth Challenge’ (now closed) offering a $25 million prize to whomever can demonstrate a commercially viable design to remove greenhouse gases from the atmosphere. One of the businesses within the Virgin Group is Virgin Green Fund (‘VGF’). It is a private equity firm that was launched in the UK in 2007 after Sir Richard Branson pledged to invest $3 billion into alternative energy projects. Its initial incarnation was as Virgin Fuels in 2006 which then became VGF in 2007.

The Hearing Officer commented that the reputation of the word VIRGIN in fancy script is undeniable. It has been used extensively all over the world as a trade mark in relation to many industries including publication of music, retail services, an airline and associated travel services, telecommunications, and a host of other businesses. It is unlikely that the appearance of the word VIRGIN in fancy script in respect of almost any good or service would not be taken to indicate a connection to the Opponent or the Virgin Group.

With regard to the word VIRGIN in plain text, the Hearing Officer considered there was a considerable Australian reputation in respect of an airline, mobile telephone communications, credit card and related financial services, music publishing and retailing of CDs and DVDs. However, the Hearing Officer was not satisfied that the plain text trade mark, VIRGIN, had a reputation as at the relevant priority date and in Australia in respect of many other businesses addressed in the evidence. Many of them are/were based in the UK or countries other than Australia, or were short lived attempts to launch a new line of goods or services, or temporary promotions. Examples include the Virgin Drinks and Virgin Cola businesses, the Virgin Bride and Virgin Ware (a clothing label) businesses, condoms distributed under the name ‘Mates Condoms’, Virgin Cosmetics and Virgin Radio. While Virgin Books continue to be distributed in Australia, the promotional expenditure and sales figures in evidence indicate the popularity of the published books and did not establish the reputation or recognition amongst the public of the book publisher.

The Hearing Officer also commented that the various environmental initiatives undertaken by Sir Richard Branson or the Virgin Group have received some measure of publicity in Australia. A number of media articles were in evidence which refer to Sir Richard Branson and his aim to develop more environmentally friendly fuel, particularly in respect of his airline. It was reasonable to suppose, on this basis, that the Australian public would recognize that the Virgin Group is attempting to become more environmentally sustainable and is encouraging others to do so. However this did not extend to finding the Opponent’s VIRGIN trade marks have a reputation in respect of environmental services.

While a relevant reputation may exist without doing business directly in Australia, the Hearing Officer was not prepared to infer that such reputation existed merely because of the diversity of the Opponent’s business operations.

The opposition was successful in respect of the services claimed in class 36 as well as “advisory and consultancy services in the field of carbon offset sequestration” and “carbon offsetting services” in class 42,. The Hearing Officer was satisfied that deception or confusion in the Australian market is likely. It is not uncommon for carbon trading to be facilitated and participated in by banks and other financial institutions. The Opponent’s trade marks have a reputation in respect of credit card and related financial services, and the Opponent has a wealth of resources available to it. In addition, the ordinary meaning of the word VIRGIN is not one that would normally be applied to these services (whereas GREEN is somewhat descriptive owing to its ‘environmentally friendly’ connotation). For these reasons, it is likely the Australian public would be caused to wonder whether the Opponent had extended its services into carbon trading and associated services, using the word GREEN to indicate the environmentally friendly nature of them.

The Hearing Officer was not satisfied that the Opponent had established use of VIRGIN GREEN FUND or VIRGIN GREEN, as trade marks, in Australia before the priority date of the subject application, and the ownership ground of opposition under s58 failed. Also, the Opponent’s evidence alleging lack of intention to use was not sufficient to shift the onus onto the Applicant, so that ground of opposition also failed.

This decision is on appeal to the Federal Court.