Trade Mark News & Information

Trademark Registration – December 2015-ATMO Decisions

General Motors LLC [2015] ATMO 114 (1 December 2015)

An application filed on 27 June 2013 by General Motors seeking trademark registration of the Logo shown below for motor vehicles and their parts in class 12 was rejected.

Trademark Registration General Motors Logo

The examiner had raised an objection that this trademark was contrary to the Geneva Conventions Act 1957 due to the presence of a cross. The applicant was unwilling to agree to the usual endorsement to the effect that the cross device contained within the trademark will be rendered in colours other than red on a white or silver background, or white or silver on a red background. The applicant was also unwilling to seek consent from the Minister for Defence.

At the hearing the applicant argued that the stylised cross in the trademark has been in use since 1913 and is known as the Chevrolet ‘bowtie’. The trade mark was launched on 13 January 2013 in connection with the seventh generation CORVETTE motor vehicle. Earlier versions of this ‘bowtie’ had been used in red and white colour schemes and hence the reluctance to agree to the endorsement requested by the examiner. The applicant also had earlier trademark registrations containing or consisting of the ‘bowtie’. It also argued the horizontal arms of the ‘bowtie’ have oblique ends and are approximately 3.6 times longer than the vertical arms. Consequently it does not so nearly resemble the particular cross with vertical and horizontal arms of the same length caught by the Geneva Conventions Act.

The hearing officer considered the Registrar does have power to decide whether the trademark sought to be registered is contrary to the Geneva Conventions Act and that it is appropriate to consider the cross element in the applicant’s trademark by itself and separately from the mark as a whole. On this approach, the hearing officer was in no doubt that the applicant’s cross element so nearly resembled the cross emblems caught by the Geneva Conventions Act so as to be capable of being mistaken for, or understood as referring to, one of those emblems. However, the hearing officer did not provide any justification for this conclusion and did not discuss the likelihood of such a mistake or reference in the context of the applicant’s mark as a whole. The hearing officer was also dismissive of the applicant’s reliance on the state of the Trade Marks Register and its registrations for various other trademarks containing its ‘bowtie’ in New Zealand and the United Kingdom where the Geneva Conventions Act is also applicable.

 

Eveden Inc v P & Y Halas Pty Limited [2015] ATMO 116 (2 December 2015)

Successful opposition by Eveden to trademark registration of SEAFOLLY GODDESS filed on 3 September 2013 for swimwear in class 25.

Under the s44 ground, the opponent successfully relied on its prior registration for GODDESS dating from 20 November 1958 for ‘brassieres, foundation garments and related ladies apparel’ in class 25.

The hearing officer agreed with the opponent that swimwear and lingerie were similar goods. The opponent’s evidence reinforced that a number of entities, including the opponent, produce both lingerie and swimwear under the same trade mark or under separate trade marks. Also bras and bikini tops share the same method of construction. Further, the hearing officer considered SEAFOLLY GODDESS to be deceptively similar to GODDESS. Although the SEAFOLLY brand enjoyed a significant Australian reputation for swimwear, the applicant’s evidence did not show it to be of such notoriety or ubiquity that its reputation could properly be considered in the context of s44. The usual meaning of GODDESS is retained in the SEAFOLLY GODDESS mark and it carries equal weight in distinguishing the relevant goods.

The opponent also relied on a prior trademark registration for GODDESS owned by another party which covered “women’s clothing including tops, dresses, skirts, pants, shorts and jackets, but excluding underwear and hosiery”. The hearing officer also upheld the s44 ground based on this registration, finding swimwear to be embraced by the general claim to women’s clothing and SEAFOLLY GODDESS to be deceptively similar to GODDESS.

The opponent also relied on its Australian reputation through use of the GODDESS trade mark for lingerie since at least 1988, but it was not necessary for the hearing officer to consider the s60 ground of opposition in light of the opposition being upheld under the s44 ground.

 

Coathurst Pty Ltd v Dune Holdings Limited [2015] ATMO 115 (3 December 2015)

Successful opposition by Coathurst to an application for removal seeking partial removal of its trademark registration for DUNES Logo shown below in respect of ‘footwear and headgear’ alleging non use during the three year period ending on 10 September 2013. The DUNES Logo mark has been registered from 30 May 1996 for ‘clothing surf wear, footwear head gear’ in class 25.

Trademark Registration DUNES Logo 

The removal applicant contended that one piece of the opponent’s evidence was of questionable probity and this tainted the remaining evidence. However, the hearing officer did not consider that this should cause him to regard the opponent’s evidence with anything other than the normal degree of circumspection. When considered in its totality, the hearing officer was satisfied the opponent’s evidence was coherent and real and was sufficient to rebut the allegation of non use during the relevant period. Further, it was appropriate to exercise discretion in the opponent’s favour. Consequently, the removal application failed in its entirety.

 

Gavin Chan Pty Ltd and Victorian Cosmetic Institute Berwick Pty Ltd v Victoria Chakkour [2015] ATMO 117 (4 December 2015)

Unsuccessful opposition by Gavin Chan and Victorian Cosmetic Institute Berwick to trademark registration of the Logo shown below filed on 2 July 2013 for ‘personal hair removal service’ in class 44.

Trademark Registration Victorian Cosmetic Dermal Clinic

Under the s60 ground, the opponents relied on their Australian reputation in VICTORIAN COSMETIC INSTITUTE derived from its use since 2005 in relation to cosmetic surgery and similar services. However, this ground failed because the hearing officer was not satisfied the evidence established trade mark use as opposed to business name use. Further, these words were descriptive and lacked inherent adaptation to distinguish the opponents’ services.

Under the s42(b) contrary to law ground, the opponents’ relied on use of the applied for mark being contrary to the Australian Consumer Law. However, since the s60 ground failed, the opponents could not satisfy the higher onus and evidentiary requirements under s42(b).

The s62A bad faith ground also failed. The opponents’ evidence contained mere assertions and fell short of the cogent evidence required to substantiate the serious allegation of bad faith.

The s41 distinctiveness ground also failed with the hearing officer considering the inclusion of the DNA device and the layout of the word elements in the applied for mark being sufficient to impart the requisite degree of inherent adaptation to distinguish.

 

Jack Gance and Mario Verrocchi v Ian Tauman [2015] ATMO 118 (16 December 2015)

Unsuccessful oppositions by Gance and Verrocchi to trade mark registration of the three Logos shown below each filed on 6 August 2013 for pharmacy retail services in class 35 and pharmacy related services in class 44.

Trademark Registration Direct Chemist Outlet Discount Chemist  Trademark Registration DCO Direct Chemist Outlet  Trademark Registration Direct Chemist Outlet

As a preliminary issue, the opponents sought to have the decision on the s42(b) ground delayed pending the outcome of a Federal Court appeal, but the hearing officer declined to do so.

The opponents relied on s60 based on their Australian reputation derived from use of the trade marks shown below and s42(b) based on the reputation in the colour schemes of their retail pharmacy store get-ups and catalogues, arguing that use of the applied for marks in the colours designated would be likely to mislead or deceive consumers due to their similarity to the Chemist Warehouse colour scheme.

Trademark Registration Chemist Warehouse  Trademark Registration Chemist Warehouse Discount Chemist

The colour scheme relied upon involved yellow as the major background in conjunction with lesser use of red and blue as background colours, white and black writing, a large ‘house’ Logo with a red background bearing white writing, and the Chemist Warehouse logo placed above a strip of blue background with the words ‘Discount Chemist’ in white writing.

Under the s42(b) ground, the hearing officer noted the dominant use of yellow on the opponents’ stores which was not always reflected on the catalogues and was not satisfied as to the Opponents’ reputation in its colour scheme. The colour yellow is used by others, having functional attributes due to its visibility and conveys the value proposition of ‘discount’ outlets. The relevant consumer’s analysis would not involve an intellectual side by side comparison, but would rather be governed by an overall impression of colours in combination with other branding features, including the relevant word elements and logos. Also, the applied for marks, although filed in colour, were not limited to any particular colour and are taken to be filed in any colours.

Further, the respective word elements are quite descriptive and relatively small difference tend to be sufficient to differentiate between them. Any confusion is more likely to be attributable to choice of an eloquently descriptive trading name, rather than deliberate misappropriation by the applicant of the reputation of the opponents’ trade dress per se.

Under the s60 ground, the hearing officer was satisfied the opponents’ trademarks had acquired a relevant Australian reputation, but was not satisfied as to the likelihood of confusion due to the differences in the respective trademarks.

 

Dox-al Australia Pty Ltd v Dox-al Italia S.P.A [2015] ATMO 119 (17 December 2015)

Unsuccessful oppositions by Dox-al Australia to trade mark registration of DOX-AL and dox-al (stylised) filed on 19 April 2011 for various medicinal and veterinary preparations in class 5 and animal feedstuffs in class 31.

The evidence disclosed a business relationship between the Italian applicant and the opponent’s managing director, Mr Lyons and his related entities, had existed since at least 1990, but the parties characterised this relationship differently. The applicant considered the opponent to be its distributor, while the opponent considered itself to operate independently of the applicant. The hearing officer found in favour of the applicant and concluded it was the first user and owner of the DOXAL trademarks in Australia, so the s58 ground of opposition failed.

Under the s60 ground, the hearing officer was not satisfied the opponent’s evidence was sufficient to establish it has acquired a relevant Australian reputation as at 19 April 2011 and the assertions of confusion were attributable to the opponent having adopted the trademarks of the Italian applicant. The extent of the opponent’s reputation was also muddied by the benefit of its use of the DOXAL trademarks accruing to the applicant as the true owner of these trademarks.

Given the hearing officer’s findings under the s60 ground, the s42(b) contrary to law ground based on the allegation of misleading or deceptive conduct the Australian Consumer Law also failed because the opponent could not satisfy the higher onus and evidentiary requirements under this ground.

 

Société Des Produits Nestlé S.A. [2015] ATMO 120 (18 December 2015)

Nestle was unsuccessful in overcoming a non distinctiveness objection to its application filed on 24 May 2013 for trademark registration of AS GOOD AS IT LOOKS for animal foodstuffs in class 31.

The hearing officer agreed with the examiner that the s41 objection was appropriate. “As good as it looks” is a colloquial phrase which is used to describe the quality of something. It has a clear meaning and does more than evoke an emotive idea. It proclaims to the public that the goods are as good as they look. It is part of the common heritage and the ordinary consumer would have no hesitation in understanding this phrase as indicating the quality of the animal foodstuffs to which the trademark is applied.

Nestle offered to restrict the specification to “cat food”, but this was not sufficient to overcome the objection.

Nestle also relied on evidence showing the applied for trademark was first used in the UK in 2004 and introduced into Australia in March 2014. While the Australian promotional activity, sales revenues and market share gained in a short period of time were significant, the hearing officer noted that the applied for trade mark was used in combination with the Nestle’s FELIX and PURINA brands and was not satisfied the phrase AS GOOD AS IT LOOKS was acting in its own right as a badge of origin separate from the other brand indicia used by Nestle. The hearing officer considered there is a strong possibility of this phrase being viewed as a descriptive adjunct and is, at best, a limping trade mark.

 

AIMMAD PTY. LTD. [2015] ATMO 123 (22 December 2015)

Aimmad was unsuccessful in overcoming objections that its application filed on 20 March 2014 for trademark registration of over 100 expressions each containing the words AUSTRALIAN PETTREATS for animal foodstuffs in class 31 did not qualify as a valid series and that the words AUSTRALIAN PETTREATS were descriptive and not capable of distinguishing the relevant goods.

The hearing officer considered that, when used in relation to pet foods, AUSTRALIAN PETTREATS describes the goods and their origin. It indicates that the goods are pet treats from an Australian supplier. It is the kind of description that any Australian supplier of pet treats is likely to use in the ordinary course of business. It would not be perceived by persons concerned with pet foods as being a badge of origin.

Aimmad relied on evidence of its Australian use of AUSTRALIAN PETTREATS and AUSTRALIAN PET TREATS since 2010 but, given the size of the pet food market, the hearing officer was not satisfied that the majority of persons concerned with pet foods would regard AUSTRALIAN PETTREATS as anything other than an ordinary description. The hearing officer also considered that none of the other expressions alleged to form a series of trade marks were prima facie capable of distinguishing. The examiner had considered that AUSTRALIAN PETTREATS ZERO and AUSTRALIAN PETTREATS NAKED were sufficiently distinctive, but the hearing officer disagreed.

The more interesting aspect of the decision concerns whether some or all of the expressions qualified as a series of trade marks.

Under s51(1) of the Act, a person may make a single application for the registration of 2 or more trade marks if they resemble each other in material particulars and differ only in respect of one or more of the following matters:

(a) statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;

(b) statements or representations as to number, price, quality or names of places;

(c) the colour of any part of the trade mark.

Aimmad argued that the material particulars of each of the trade marks in the alleged series are the words AUSTRALIAN PETTREATS with the other words being mere descriptions of the goods. However, given the hearing officer’s finding that AUSTRALIAN PETTREATS is an ordinary description and the evidence was insufficient to show these words had acquired sufficient distinctiveness through use, when combined with other descriptive words, each expression draws its identity from all the words, not just AUSTRALIAN PETTREATS. Where a trade mark lacks any inherent capacity to distinguish, then even minor variations must make a substantial difference to the material particulars of the trade mark. By way of example, the hearing officer commented that the material particulars of AUSTRALIAN PETTREATS CAT TREATS are different from those of AUSTRALIAN PETTREATS PIG SNOUTS. Consequently, the expressions did not qualify as a valid series.

 

The Institute of Chartered Accountants in Australia v The Chartered Institute of Management Accountants [2015] ATMO 121 (23 December 2015)

This case involved an opposition by The Institute of Chartered Accountants in Australia (ICAA) to an application filed on 4 May 2011 for trademark registration of THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS and a cross opposition by The Chartered Institute of Management Accountants (CIMA) to an application filed on 10 February 2012 for trademark registration of THE INSTITUTE OF CHARTERED ACCOUNTANTS AUSTRALIA. Both oppositions were unsuccessful.

Under the s44 ground, ICAA relied on its prior trademark registrations for the composite mark shown below:

Trademark Registration CA logo

However, the hearing officer considered CIMA’s THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS trade mark was sufficiently different and unlikely to be confused with ICAA’s registered mark.

Under the s60 ground, ICAA relied on the reputation derived from its use since 1928 of various trade marks containing the word CHARTERED ACCOUNTANTS. However, the hearing officer considered “the dominant features of the words ‘chartered accountants’ and the CA devices attributed to those words are such that members of the relevant consumers – described as ‘prospective candidates, existing candidates, accountants and the accounting industry’ – are unlikely to attribute a business connection between the IRDA and ICAA”. Hence, there is not a real and tangible danger of confusion.

ICAA also relied on the s42(b) ground and alleged that CIMA’s use of THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS would be contrary to the Australian Consumer Law but, since ICAA had not established the s60 ground, it could not satisfy the higher onus under the s42(b) ground.

For its cross opposition, CIMA relied on s44 and its prior application for trademark registration of THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS. While the hearing officer acknowledged there was a greater degree of similarity between this mark and ICAA’s applied for THE INSTITUTE OF CHARTERED ACCOUNTANTS AUSTRALIA mark, he was still not satisfied that relevant consumers would be led to wonder whether the goods and service under ICAA’s mark come from, or are associated with, CIMA.

CIMA also relied on s60 and the Australian reputation derived from its use of the CIMA logo shown below with the words Chartered Institute Of Management Accountants since 1986:

Trademark Registration CIMA logo

However, for similar reasons in finding against ICAA in its opposition, the hearing officer was not satisfied there would be a likelihood of confusion between this composite mark and ICAA’s THE INSTITUTE OF CHARTERED ACCOUNTANTS AUSTRALIA mark.

 

Innovation Ventures, LLC v Life Essentials GmbH [2015] ATMO 122 (23 December 2015)

Successful opposition by Innovation Ventures to applications filed on 12 November 2013 for trademark registration of the word marks ON 5 HOURS and ON 5 as well as the logo shown below for various goods and services in classes 5, 32 and 35.

Trademark Registration On 5 Hours logo

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

Under the s60 ground, the opponent relied on its reputation in the USA having spilled over into the Australian market. Its evidence disclosed it launched its 5-HOUR ENERGY brand in September 2004 and is the largest manufacturer and seller of energy drinks in the energy-shot market in the USA. The opponent promoted this brand through significant sponsorship of USA sporting events such as PGA gold, NASCAR motor racing, American NFL football, baseball, cycling and rugby, with many of these events being televised in Australia. There was also evidence of the opponent having sold substantial amounts of its 5-HOUR ENERGY products through its website to Australian customers since 2008 and substantial website traffic from Australian IP addresses. The opponent also referred to the applicant’s use of the applied for mark in Germany for similar energy-shot products using get up that is similar in design and colours to that of the opponent’s 5-HOUR ENERGY products.

The hearing officer concluded that “given the significant level of the Opponent’s reputation in the US for its 5-HOUR ENERGY products and spill over into the Australian market, I am satisfied on the balance of probabilities that a number of Australian residents will have come into contact with the Opponent’s 5-HOUR ENERGY branded goods. I am also satisfied that with the Opponent’s very considerable reputation and presence in the US and foreign marketplace that it is likely a significant number of Australian residents would be aware of the Opponent’s 5-HOUR ENERGY products and would be caused to wonder if there was a connection between them and the Holders similar goods branded with its IRDA”.

 

Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124 (24 December 2015)

Unsuccessful opposition by Ion Asset Management to an application for removal of its trademark registration for ION for various financial services alleging non use during the three year period ending on 25 January 2014.

The opponent relied on a Declaration filed by its Australian trade mark attorney and the removal applicant did not file any evidence. Both parties were represented by counsel and filed written submissions. In its written submissions, the removal applicant sought to rely on additional documents under Regulation 21.19 and the opponent also filed additional declarations the day before the hearing and also sought to rely on Regulation 21.19, but the hearing officer did not consider any of this material.

The Declaration by the opponent’s Australian attorney essentially consisted of screen shots of the opponent’s website extracted using the Wayback Machine internet archive from seven dates during the relevant non use period. There were cautious statement based on information and belief, but the source of that information was not disclosed. The hearing officer characterised these statements as “a monument to cautious and non-committal hearsay”.

The hearing officer referred to established case law holding that the use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. In the present case there was no evidence that the opponent’s website had been directed to Australian users. Due to the shortcomings in the opponent’s evidence, the hearing officer could not be satisfied, on the balance of probabilities, that the opponent had satisfied its onus of rebutting the allegation of non use.

The hearing officer also discussed the Registrar’s discretion under Regulation 21.19 to take into account information made available outside of formal evidence and concluded that it would be an “unfair and unwarranted imposition” upon the removal applicant to consider the material filed by the opponent the day before the hearing.

The hearing officer also decided that there was no basis for exercising discretion in favour of the opponent and ordered the trademark registration for ION to be removed from the Register.