Trade Mark News & Information

Trademark Registration Australia – ATMO Decisions – September 2014

Doric Management Pty Ltd v Loukat Holdings Pty Ltd [2014] ATMO 99 (4 September 2014)

Successful opposition by Doric to registration of the trade mark shown below for stone benchtops and counters in class 19 as well as related installation services in class 37 and processing of marble and granite in class 40.

Doric marble logo

Doric Constructions owned prior registrations for the trade marks shown below dating from 1998 which were encountered as objections during examination, but the applicant was able to overcome them by relying on the other circumstances (s44(3)(b)) and prior continuous use (s44(4)) provisions. There was no discussion of the evidence filed by the applicant.

DORIC Logo          DORIC CONSTRUCTIONS Logo

Doric’s evidence established that it operates a group of companies that have been trading in the construction industry since 1989, including high profile projects featuring marble installations since 2001. The hearing officer was satisfied that, as a result of the significant use and reputation of its registered trade marks, they had become well known. A significant number of Australian consumers would at the very least speculate as to some sort of connection between those well known trade marks and the applicant’s trade mark.

The hearing officer applied the Federal court case of McCormack & Company Inc v McCormick [2000] FCA 1335 and upheld the s60 reputation ground of opposition because it operates independently of s44(3) and s44(4).

There are parallels with the Fairmont Resort decision reported in August 2014.

 

Novartis AG v Obvieline [2014] ATMO 79 (5 September 2014)

Successful opposition by Novartis to registration of the trade mark SYNECTHA for various pharmaceuticals in class 5.

The applicant did not file any evidence or appear at the hearing. Rather it just relied on written submissions.

The s44 ground of opposition was upheld based on the opponent’s earlier registration for SYNACTHEN which covered pharmaceutical and veterinary preparations generally.

The hearing officer was satisfied the respective trade marks were deceptively similar and noted “the trade marks have no shown meaning but they share a common prefix along with other common letters and syllables. In my opinion the trade marks have significant similarities. As noted, the likelihood of confusion rises with the increased similarity of the goods. Notional usage of both marks means that they might in principle be used on the same and similar “pharmaceuticals”. I consider that the relevant market for the goods is the medical profession, pharmacists and ordinary members of the public who might choose over the counter pharmaceuticals. I find that, at least in relation to that last class of consumers of the goods, there is a real and tangible likelihood of confusion created by use of the Trade Mark.”

 

Argenta Limited v Argenta Discovery 2009 Limited [2014] ATMO 80 (8 September 2014)

Successful opposition by Argenta Limited to registration of the trade mark ARGENTA for various printed publications in class 16 relating to scientific and medical fields as well as various scientific and medical research services in class 42. The specification specifically excluded products or services relating to the banking or financial sector.

The applicant filed a Notice of Intention to Defend the opposition, but did not file any evidence or participate in the hearing.

The opponent relied on its prior use of the identical ARGENTA trade mark for goods and services in the animal health care field. It is a New Zealand based company incorporated in 2006 and acquired the Nufarm animal health products manufacturing business. Its business is essentially a contract research organisation and a contract manufacturing organisation. These services were provided to Australian clients since September 2006. The clients include 8 of the top 10 global animal health pharmaceutical companies. The opponent also operates the website at www.argentaglobal.com and attends the AusBiotech Conference in Australia.

The hearing office considered “the goods and services are very specialized and the potential market is very small. Knowledge of the Opponent’s trade mark might only exist amongst the few hundred people in Australia which constitute the marketplace. None-the-less, the Opponent’s evidence demonstrates that its ARGENTA word and logo trade marks are well-known within this marketplace.” The hearing officer was also satisfied, without doubt, there would be a likelihood of confusion due to the respective trade marks being identical and the goods/services involved are to all intents the same and/or very closely related. As a result, the s60 reputation ground of opposition was established.

 

Major League Baseball Properties, Inc. v Spartan Sports Holdings Pty Ltd [2014] ATMO 81 (9 September 2014)

Unsuccessful opposition by Major League Baseball Properties to registration of the trade mark TWINS for boxing equipment in class 28.

Both parties filed evidence, but only relied on written submissions and did not appear at the hearing.

A related company of the Applicant already had a registration for the TWINS Logo mark shown below covering sporting articles in class 28 and dating from April 2007.

TWINS Logo

THE TWINS word and Logo marks had been used by the applicant or its predecessor in title.

The opponent relied on use and registration of various trade marks connected with the Minnesota Twins American baseball team, including the registered trade mark shown below:

MINNESOTA TWINS Logo

It argued that the element TWINS was the essential feature of this registered mark and that the additional elements MINNESOTA and the baseball device do not stand out and are unlikely to be recalled. The applicant’s mark takes this essential feature. However, the hearing officer was not persuaded by this argument and reinforced the need to consider this composite mark in its entirety. While the applicant’s TWINS mark is wholly contained within the opponent’s registered mark, it is very much subsumed within this mark as a whole. Consequently, the hearing officer considered the respective trade marks were not deceptively similar, so the s44 ground failed.

For the s60 reputation ground, the opponent sought to rely on its use and licensing of numerous marks containing MINNESOTA TWINS, TWINS and/or a baseball device. However, the hearing officer was critical of this evidence and found it was insufficient for him to ascertain the nature or extent of the reputation of these marks in Australia as at the filing date of the applied for TWINS mark in 2008. As a result, this ground of opposition also failed.

 

Bendigo Cemeteries Trust [2014] ATMO 82 (10 September 2014)

An application to register the trade mark Remembrance Parks Central Victoria for a range of goods and services in classes 16, 25, 35, 42 and 45, including funeral, cemetery and crematoria related services was partially refused on the ground of lack of distinctiveness.

The application was filed on 21 December 2012, so s41 prior to its amended wording effective from 15 April 2013 was applicable.

The examination objection was framed in terms of the words Remembrance Parks being commonly used to describe PARKS that are built in REMEMBRANCE of a person or persons. The applied for mark was descriptive because it indicates the geographical origin, character and intended purpose of the relevant goods and services, namely a PARK in CENTRAL VICTORIA dedicated for the REMEMBRANCE of a person or persons.

The hearing officer agreed with the applicant’s counsel that the applied for mark was sufficiently distinctive and registrable for the designated goods in classes 12, 16 and 25 as well as website branding services in class 35 and website development services in class 42. However, it lacks inherent adaptation to distinguish the remaining funeral, cemetery and crematoria related services.

The evidence disclosed the applicant adopted a new brand with the words appearing in proximity to a distinctive logo element as shown below:

Remembrance Parks Logo

Remembrance Parks words

 

The hearing officer considered that, where the words are used on their own, they were functioning as a business name, not as a trade mark. These words were being used to refer to the Applicant, rather than to its services. Even if these words were to function in a trade mark sense, they were diluted by the logo element and a mere limping trade mark dependent upon the logo for distinctiveness.

 

Facebook, Inc v FACEMBA, LDA [2014] ATMO 83 (10 September 2014)

Successful opposition by Facebook to registration of the trade mark “facemba” for provision of an Internet platform for social networking services in class 38.

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

The hearing officer upheld the s60 reputation ground of opposition, so it was not necessary to consider the other grounds.

Not surprisingly, the hearing officer was satisfied that the opponent’s FACEBOOK trade mark had acquired a substantial reputation in Australia in respect of social networking and other Internet platform services and that deception or confusion with the applicant’s mark is likely. “Consumers confronted with a social networking platform with the prefix FACE- would be caused to wonder if it was associated with the opponent. This would be particularly so given that the FACEBOOK services had their origins in the area of university students. Consumers would naturally assume that the opponent might create a social network or offer other services directed to MBA students or graduates.”

 

Save My Bacon Ltd v Marketing Intelligence Ltd [2014] ATMO 84 (12 September 2014)

Successful opposition by Save My Bacon Ltd to registration of the trade mark SAVE MY BACON for a broad range of services in classes 35, 36 and 41.

Both parties filed evidence, but only relied on written submissions.

The s62A bad faith ground was established.

The opponent is a New Zealand based company providing financial services in the nature of online short term personal loans. Mr Edward Recordon (a former joint managing director of the opponent) registered the savemybacon.co.nz domain name and the corresponding website was launched on or around 1 October 2009. This domain name was subsequently transferred to the opponent. The opponent also obtained a NZ trade mark registration for SAVE MY BACON dating from 28 August 2009.

Mr Jon Mells, the founder and managing director of the applicant, was a friend of Mr Recordon and had been involved with obtaining the savemybacon.co.nz domain name. He also registered the savemybacon.com.au domain name on 5 March 2009 on behalf of Mr Guy Randall (a former business partner of Mr Recordon). The opponent was unaware of this until May 2011. Mr Mells was briefly employed by the opponent from April to September 2010. There was seemingly some dispute about payment for the services he provided. The savemybacon.com.au domain name was subsequently transferred to Mr Mells in October/November 2010.

The opponent registered the savemybacon.net.au domain name on 18 August 2012 and obtained the savemybacon.com domain name shortly thereafter.

On 20 August 2012, there was a telephone conversation between Mr Mells and Mr Gillman (the CEO of the opponent) regarding the savemybacon.com.au domain name and the money claimed to be owed to Mr Mells.

The opposed trade mark application was filed on 21 August 2012.

The hearing officer found that, while he was employed by the opponent, Mr Mells was aware of the opponent’s intention to expand the business into Australia and elsewhere. Indeed, in August 2010, Mr Mells advised the opponent to register the SAVE MY BACON trade mark in Australia.

Emails exchanged between Mr Mells and the opponent between November 2012 and February 2013 were admitted into evidence, despite the objection of the applicant. The hearing officer inferred from this correspondence that Mr Mells was seeking to use the savemybacon.com.au domain name and the opposed trade mark application as leverage to extract a settlement for the money he claimed to be owed and to frustrate the opponent’s business activities in Australia.

The hearing officer concluded that a reasonable person standing in the applicant’s shoes ought not have filed the opposed trade mark application in these circumstances and that it was filed in bad faith. The applicant’s conduct in doing so fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

 

Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85 (15 September 2014)

Successful opposition by Insight Clinical Imaging to registration of the trade mark shown below for radiology services.

Insight Radiology Logo

The opposed trade mark application was filed on 7 December 2011 and the applicant’s first use of this mark was in February 2012.

The s58 ownership ground of opposition was established based on the opponent’s earlier use of the trade mark shown below:

Insight Clinical Logo

The opponent had used this mark for radiological services provided in Western Australia since at least 18 August 2008.

The hearing officer considered the applied for trade mark was substantially identical to the opponent’s trade mark which had already been used for the same kind thing. He noted “the essential features in the trade marks are, in my consideration, the word ‘Insight’ in common between the trade marks and to a lesser extent the circular ‘eye’ or ‘lens’ device in common between the trade marks. The descriptive matter, the words ‘clinical imaging’ and ‘radiology’ are subject to heavy discounting in the comparison… Concerning the ‘eye’ or ‘lens’ devices in the trade marks: in the context of the trade marks under consideration the devices appear to me to be differing versions of the same thing. Both have an inner and outer circle. Both have a break on the right hand side. Both have some contrast between the inner and outer circle.”

 

Bendigo Cemeteries Trust [2014] ATMO 86 (16 September 2014)

An application to register the trade mark Memorials@home for a range of goods and services in classes 16, 25, 35, 42 and 45, including funeral, cemetery and crematoria related services was partially refused on the ground of lack of distinctiveness.

The application was filed on 21 December 2012, so s41 prior to its amended wording effective from 15 April 2013 was applicable.

The examination objection was framed in terms of the trade mark being descriptive of funeral related goods and services which allow a consumer to have a MEMORIAL service AT their HOME.

The applicant’s evidence was that “in the 2012/13 financial year, the Mark was developed to represent and promote the Applicant’s memorialisation business plan. The business plan was developed to accommodate a changing community sentiment towards allowing individuals to memorialise their loved ones in a discrete and dignified manner in their own homes rather than being restricted to memorialisation within remembrance and memorial parks.”

The hearing officer stated that “it appears to me that, on the plain meaning of the expression, traders in the funeral industry who provide memorials at the homes of the deceased, their family or friends would desire or need without improper motive to use that expression or one closely resembling it for the sake of its ordinary meaning. This is particularly so with the trend, referred to in the evidence, away from religious memorial services to secular ones. The expression thus lacks prima facie inherent adaptation to distinguish in relation to goods and services connected with providing memorials at the homes of people. Thus, for the services ‘Funeral and associated bereavement counselling, funeral services (including pre-paid funeral services), undertaking,’ (being part of the Class 45 specification), I consider that the expression lacks any inherent adaptation to distinguish the services of the Applicant from the services of other traders who provide similar services. In relation to ‘printed matter and materials, photographs, stationery, office materials, vehicle decals and livery, brochures and pamphlets’ (being the entire Class 16 specification), “clothing, footwear, headgear and associated apparel” (the entire Class 25 specification), “cemetery management and business administration, burial, grave digging, crematoria business administration, office administration, website branding” (the entire Class 35 specification), ‘website development’ (the entire Class 42 specification) and the “burial, grave digging, embalming” services included as part of the Class 45 specification, I consider that the Trade Mark is to some extent inherently adapted to distinguish those goods and services from the goods or services of other persons but I am unable to decide, on that basis alone, that the trade mark is “capable of so distinguishing those designated goods or services.”

The evidence submitted by the applicant was insufficient and the hearing officer refused the application for all the claimed goods and services except “cremation services” which he considered were the only services for which there is no ground for rejection.

 

Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87 (16 September 2014)

Unsuccessful opposition by Cars on Demand IP Pty Ltd to registration of the trade mark shown below for vehicle rental and leasing and other transport services in class 39.

Cars on Demand Logo

This application also carried an endorsement, namely “Colour Claimed: Orange, black, white and grey.* The following disclaimer has been requested under subsection 74(1):Registration of this trade mark gives no exclusive right to use or to authorise the use of the words CARS ON DEMAND”.

The applicant had been using this trade mark in the United Kingdom since 2003 and was looking for a licensee for the Australian market.

The opponent was established in September 2008 and provides corporate chauffeured vehicle services. It relied on use and registration of the CARS ON DEMAND word and logo trade mark shown below

Cars on Demand IP logo

THE CARS ON DEMAND word mark registration covered services in classes 35 and 41, while the logo registration covered these services as well as various transport services in class 39. Indeed, the application for registration of the word mark originally covered class 39 services, but they were deleted due to an examination objection based on the descriptiveness of these words.

Under the s44 ground, the opponent could only rely on its prior logo registration because the word mark did not cover similar services to those of the applied for mark. However, the hearing officer agreed with the applicant that the respective logo trade marks were not deceptively similar. He was “satisfied on the evidence not only that traders in relevant Class 39 services are likely to want to use the words “cars on demand”, or “on demand”, in connection with car hire for the sake of their ordinary significance and without improper motive, but that several have already done so” and “the Opposed Mark is otherwise quite different from, and readily distinguishable from, the Opponent’s Device Mark when the marks are compared as wholes”. Consequently, this ground of opposition failed.

The s58 ownership ground of opposition also failed. The Hearing Officer did not consider the applied for logo mark was substantially identical to the opponent’s CARS ON DEMAND word or logo marks and noted that “based on such a side by side comparison I am satisfied that “the total impression of resemblance or dissimilarity that emerges” between each of the Opponent’s marks and the Opposed Mark is rather one of dissimilarity”. In this regard, the hearing officer also specifically noted the endorsement limiting rights in the applied for mark to specific colours and the disclaimer of the descriptive words CARS ON DEMAND. Further, the hearing officer also commented that “even if I were to consider the Opposed Mark was substantially identical to the Opponent’s claimed CARS ON DEMAND word mark in particular, the use by the Opponent of the words “cars on demand” shown in Khoury 1 and 2 is in my view insufficient to found the Opponent’s claim to their exclusive “ownership” for relevant services in any event.

 

B Seppelt & Sons Ltd and Tucker Seabrook (Aust) Pty Ltd v Blaxland Vineyards Limited [2014] ATMO 88 (17 September 2014)

Successful opposition by Seppelt and Tucker Seabrook to registration of the trade mark shown below for alcoholic beverages in class 33.

TUNUNDA HILL label

The application carried an endorsement that “It is a condition of registration that the trade mark will only be used in respect of wines produced predominantly from grapes grown in the Tanunda area”.

The opponents argued that the word TANUNDA is generally understood as referring to a small township in the Barossa Valley. Australian wine consumers would reasonably expect that a wine with a label that includes the word TANUNDA would be produced in (or from grapes grown in) that township, or at least very near to that township. Australian wine consumers would also reasonably expect that a wine with a label that includes the words TANUNDA HILL would be produced on or near a hill in Tanunda or on or near a hill known as ‘Tanunda Hill’. In fact, the Applicant’s wine is produced at its vineyard that is located approximately 11.5 kilometres away from the township in another part of the Barossa Valley, and further there is no topographical feature called ‘Tanunda Hill’ in the Barossa Valley.

There was a further line of argument that “by reason of the fame of CHATEAU TANUNDA as a brand for premium wine and brandy in Australia for more than 100 years, the word TANUNDA has become closely associated with those products in the minds of Australian wine consumers and hence with the producers thereof. The word TANUNDA has therefore transcended the geographical connotation of being the name of the small township in the Barossa Valley in which the property known as ‘Chateau Tanunda’ is located.”

It was noted that Tanunda is not a geographical indication within the meaning of the Australian Wine and Brandy Corporation Act 1980, however it is the name of a town within the wine-producing region of Barossa and the sub-region of the Barossa Valley, which are registered GIs.

The hearing officer found in favour of the opponents under the s43 ground in finding that the applied for mark carries a deceptive or confusing connotation.

While it was noted that s43 deals with trade marks that have a misleading or confusing connotation which is inherent in the trade mark itself and not simply the product of confusion arising from the resemblance of the trade mark to a mark used by another, the hearing officer referred to a 2006 Registrar’s decision in Playboy Enterprises International v Auszan Pty Ltd where it was noted that a sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles or signifies a particular sign which is so ubiquitous, of longstanding, or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular person, entity or event or connoting a particular meaning (whether or not that particular sign has trade mark significance).

The hearing officer considered the evidence reinforced that “Chateau Tanunda has long been associated in the public mind with local wine and brandy making in a region of the Barossa and under the ownership or control from time to time of one enterprise. The evidence is that there are other wineries within the township of Tanunda, but none has a name that includes the word TANUNDA and none has produced wines with names that have included the word TANUNDA. In short, whatever the geographical significance of the word TANUNDA, the evidence shows that the use of that term as part of the trade mark CHATEAU TANUNDA has replaced that geographical significance in respect of the Goods.”

Further, the hearing officer also agreed with the opponents that “the Applicant’s vineyard is not in Tanunda itself but is sufficiently outside the township (and sufficiently close to other small local towns) to disqualify the Applicant from using the Trade Mark when the trademark has, like the words “Frog Island”, the “flavour of being a geographical location” and is an expression which would lead ordinary people to believe that the words refer to an actual place where the grapes are grown or the wine produced. There is no geographical formation known as “Tanunda Hill” and the likely association will be with the “Chateau Tanunda” and the products made thereaboutsThere is no evidence that the public has a general appreciation of a so-called “Tununda area” as some subregion of the Barossa. As I have found, the public association is in fact between the name Chateau Tanunda and winemaking.”

 

Head Technology GmbH v Uloc Pty Ltd [2014] ATMO 90 (23 September 2014)

Unsuccessful opposition by Head Technology to registration of the trade mark WAXHEAD for sporting articles, including those for surfing in class 28.

The Applicant did not file any evidence, but did rely on written submissions.

Although the word “waxhead” is a slang or colloquial term referring to a surfer, the delegate did not consider this term has a direct association with the class 28 goods claimed such that other traders would have a legitimate expectation to be able to use it for the same or similar goods. Consequently, the s41 ground of opposition failed.

Under the s44 ground, the opponent relied on its various prior registrations for trade marks containing or consisting of the word HEAD, including a class 28 registration for the word HEAD covering various racket sports equipment, ski equipment and golf equipment. However, the hearing officer did not regard WAXHEAD to be deceptively similar to HEAD. He commented that “the likelihood of confusion or deception is remote. As shown by the dictionary evidence, WAXHEAD is a common colloquial term. I consider it to be well understood in Australia. Even if it is not known to some members of the public, I consider that some meaning would be attributed to the term since it is part of a broader Australian lexicon of slang terms with the suffix “-head” like “revhead” and other, sometime more profane, terms. On the other hand, HEAD is a common noun and common surname.” Hence this ground of opposition failed.

The s43 ground of opposition failed because the applied for WAXHEAD trade mark does not carry any deceptive or confusing connotation in relation to the class 28 goods.

The s60 reputation ground of opposition also failed with the hearing officer considering the risk of confusion to be marginal, particularly given the differences in the respective trade marks.

Finally, the opponent also alleged that the applicant did not have an intention to use the WAXHEAD trade mark for all the goods claimed, particularly waxes for skis, but the hearing officer did not consider the evidence was sufficient to shift the onus back on to the applicant; so the s59 ground of opposition also failed.

 

Southcorp Brands Pty Ltd v Winston Wine Pty Ltd [2014] ATMO 91 (23 September 2014)

Unsuccessful oppositions by Southcorp to registration of 5 trade mark applications containing or consisting of the word WYNWOOD or WYNWEST for alcoholic and non-alcoholic beverages in classes 32 and 33 as well as related services in classes 35 and 43.

Both parties filed evidence. The opponent was represented by Counsel at the hearing. The applicant was represented by Gerard Skelly and relied on written submissions.

The opponent essentially based its oppositions on use and registration of its various WYNNS trade marks, particularly its WYNNS COONAWARRA ESTATE winery and business. It had other registrations for trade marks commencing with WYN – including WYNVALE. It attempted to argue the prefix WYN was unusual and there would be a likelihood of confusion based on the applicant’s trade marks having this same prefix. The evidence disclosed coexisting registrations for various WYNDHAM trade marks owned by Pernod Ricard and JAMES WYNEN owned by Glug Pty Ltd.

The s44 ground of opposition failed because the hearing officer did not consider any of the applied for trade marks to be deceptively similar to any of the opponent’s registered WYNNS marks. She noted that WYN is a relatively common stem in the English language with many surnames having it as a prefix and suffix. This tended against this prefix being a highly distinctive element of trade marks. The hearing officer did not characterise the prefix WYN as an essential element of any of the trade marks and was not persuaded that the opponent had a family of trade marks with this prefix. Rather, the possessive or plural surname WYNNS was the essential element.

The opponent also argued that its WYNNS mark was so well known as to be iconic. The hearing officer had some reservations as to whether it is so ubiquitous or of such long standing that consumers generally must be taken to be familiar with it. However, a finding on that aspect was not necessary because the hearing officer did not consider WYNNS to be similar to the prefix WYN such that use of one necessarily leads to conclusions about use of the other. Even, if WYNNS did have such a notorious and ubiquitous reputation, the hearing officer thought it would reduce the risk of confusion.

Under the s60 reputation ground, the hearing officer was prepared to accept that WYNNS and WYNNS COONAWARRA ESTATE had a relevant reputation for wines, but was not persuaded that consumers are accustomed to WYNNS being used as anything other than a name in its entirety. She was not persuaded that confusion or deception would be likely. Consequently, this ground of opposition also failed.

The opponent also relied on the s59 lack of intention to use ground and argued that the applied for marks were filed as alternatives to the applicant’s WINSTON trade mark applications, but the hearing officer quickly dismissed that argument and was not satisfied the opponent had done enough to shift the onus on to the applicant. In any event, the applicant’s evidence included a clear statement to the effect these trade marks were additional to its WINSTONS trade marks.

 

One Mode Productions Limited [2014] ATMO 89 (24 September 2014)

An application to register the trade mark 5SOS for a broad range of goods and services in classes 9, 16, 25 and 41 was refused, but could proceed with certain amendments to the specification.

The hearing officer upheld the examination objection based on various prior registered marks containing or consisting of SOS as shown below. He considered the presence of the numeral 5 was insufficient to differentiate the respective marks and that consumers will be caused to wonder whether the occurrence of the well-known distress call SOS in the applied for mark indicates some connection with the owners of the cited marks.

SOS          SOS Logo     SOS triangle logo

However, the hearing officer did indicate the application could proceed if class 25 was deleted and class 41 was amended to remove services which were similar to those covered by one of the prior marks.

 

Commonwealth & 8Ors v Primary Health Care Ltd [2014] ATMO 92 (24 September 2014)

Successful oppositions by the Crowns in the right of the Commonwealth of Australia and of the various States and Territories to registration of the word mark PRIMARY HEALTH CARE and the Logo mark shown below for various services relating to medical centre business management in class 35.

Primary Health Care logo

The parties filed considerable evidence and were represent by Senior Counsel at the hearing. Much of the opponents’ evidence was directed to government and policy consideration to what was considered to be “primary health care”. In particular, a 1978 conference held at Alma-Ata in the then USSR had previously published a declaration which stated that “ primary health care is essential health care … made universally accessible to individuals and families in the community … at a cost that the community and country can afford to maintain … [i]t forms an integral part … of the country’s health system … [i]t is the first level of contact of individuals, the family and community with the national health system … and constitutes the first element of a continuing health care process”.

The opposed trade mark applications were filed on 6 October 2009, but the applicant has been providing business management and administration services to medical centres since 1985.

The opposition was upheld on the s43 ground with the hearing officer finding the applied for trade marks contained an inherent connotation which is likely to deceive or cause confusion. This provision is essentially directed to preventing the public being deceived or confused as to the nature of the relevant goods/services offered by reason of a secondary meaning connoted by the relevant trade mark.

While potential consumers of health care services may firstly view the words PRIMARY HEALTH CARE as a trade mark of the applicant, the operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the services provided. Where a trade mark contains a description of services, but the trade mark is used for services which are not of that description, it is objectionable under s43 where there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion.

In this case, the hearing officer considered that “while it might be the case that the various health care professionals who lease rooms from the Applicant and utilize its services associate the words “primary health care” with the Applicant’s medical centre business management and administration services, the same cannot be said of the many patients attending the Applicant’s premises to consult the various health care professionals… Patients attending the Applicant’s medical centres are likely to believe that the Applicant is responsible for the health and medical services provided by practitioners within the medical centres. Patients are unlikely to appreciate that the Applicant is responsible only for the provision of management and administrative services to the health and medical practitioners, and not for professional governance or the quality of the health care. It is also possible for patients who are aware of the literal meaning of “primary health care” or the meaning as stated in the WHO Alma-Ata Declaration to mistakenly believe that the Applicant was in some way associated with government provided, or sponsored, community health initiatives.”

The hearing officer was satisfied that the connotation that the applicant provides primary health care services is likely to cause confusion.

 

The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2014] ATMO 93 (26 September 2014)

Successful opposition by The Design Hunter to registration of the trade mark Design Hunter for ‘organising an experiential consumer event that brings together commercial and residential design retailers’ in class 35.

Both parties filed evidence. The opponent was represented by Counsel at the hearing. The applicant filed its own written submissions.

The applicant filed the opposed trade mark application on 1 August 2012. It is a publishing company and had earlier trade mark registrations for DESIGN HUNTER in classes 16 and 41. It also obtained the designhunter.com.au domain name in 2008 with a website under development. It had been using the words DESIGN HUNTER from as early as 2008 in connection with its HABITUS magazine.

The opponent subsequently obtained registration of the trade mark shown below for various retailing and interior design services. This application was filed on 22 November 2012 with registration based on evidence of prior continuous use for such services from February 2012.

Design Hunter logo

The hearing officer was satisfied the opponent had used its logo mark and the word mark The Design Hunter for retailing and interior design services before the applicant filed its trade mark application on 1 August 2012 and that the logo mark was substantially identical to the applied for Design Hunter word mark. Despite the rather unusual wording of the applicant’s specification, the hearing officer was also satisfied they were services which could be characterised the ‘same kind of thing’ as the services provided by the opponent.

Although the applicant had been using DESIGN HUNTER in the context of its publications, there was no evidence of any use of this for the claimed class 35 services before filing its trade mark application on 1 August 2012. Accordingly, that was the relevant date for assessing its ownership rights in the context of these class 35 services.

Given the earlier use by the opponent, the hearing officer was satisfied the s58 ownership ground of opposition had been established.