Trade Mark News & Information

Trademark Registration – January 2016 – ATMO Decisions

Marriott Worldwide Corporation [2016] ATMO 1 (6 January 2016)

Marriott was unsuccessful in overcoming an objection to trademark registration of FAIRFIELD filed on 2 September 2013 for various services in classes 35 and 43.

The Examiner had raised a non-distinctiveness objection due to FAIRFIELD being a geographical place name, specifically a city and electoral district in New South Wales, a suburb of Brisbane in Queensland and a suburb of Melbourne in Victoria. In light of this geographical significance, other traders are entitled to describe their services as being provided from or in relation to these locations. Marriott offered to amend its specification of services by adding the qualifying words “…; none of the foregoing services being provided in or in relation to any geographic location with the name Fairfield”, but the Examiner did not enter this limitation because it would not overcome the objection and would render the application misdescriptive.

The hearing officer upheld this objection and noted:

The effect of the proposed amendment does not limit the geographical scope of protection of the Applicant’s Trade Mark and thus stop protection from extending to any place called ‘Fairfield’. If registration were to be granted for the Applicant’s Trade Mark with the Amended Services, it would remain open to the Applicant to bring an action for infringement under Part 12 of the Act against anyone using ‘Fairfield’ in respect of similar services: notwithstanding that Fairfield was their place of business. Such a person would have to rely on s 122; they would not be able to rely on the exclusion contained in the Amended Services.”

 

SMARTCHANNEL PTY LTD v Zhicheng Chen [2016] ATMO 2 (7 January 2016)

Successful opposition by Smartchannel to trademark registration of GENTRAX filed on 9 July 2013 for various generators in class 7.

Smartchannel prevailed under the s58 ownership ground. Its evidence established Australia use of GENTRAX as a trade mark for inverter generators from 7 April 2013 which was before the filing date of the trademark application. The hearing officer was also satisfied that the generators sold by Smartchannel were the ‘same kind of thing’ as the generators claimed in the trademark application.

 

SCOTT-DIBBEN PTY LIMITED v CANTERBURY DISTRICT HEALTH BOARD [2016] ATMO 3 (12 January 2016)

Unsuccessful opposition by Scott-Dibben to an application for removal of its trademark registration for the series of trademarks HEALTHPATH; HEALTH PATHWAYS alleging non use during the three year period ending on 18 June 2013 for any of the registered services. This trademark registration dated from 23 July 2004 and covered ‘medical services being the delivery of medically supervised disease state management programs’ in class 44.

Scott-Dibben asserted that the HEALTHPATH trade mark had been licensed to a related company, Healthpath Pty Ltd but no written license agreement was filed as evidence. The evidence disclosed use of various composite marks containing the word HEALTHPATH, primarily during 2004 to 2008, in relation to weight loss and other community health programs through participating pharmacies. There were vague statements that this activity had continued to the present time, but these statements were not supported by corroborating documents and there were inconsistencies in the evidence which cast doubt on such ongoing activity. Much of the evidence referred to software and not the provision of services. The only document in evidence which fell within the relevant three year non use period was an agreement between Heathpath Pty Ltd and a pharmacy in Dubbo, NSW but it was not clear this related to the provision of the relevant services.

Rather curiously, the opponent’s evidence in answer included extracts from the website at www.healthpath.com.au downloaded on 12 June 2013 ( being during the relevant period) but with a 2005 copyright notice attributable to Healthpath Pty Ltd.

The hearing officer was not satisfied the evidence established that the registered owner had exercised the necessary control over Healthpath Pty Ltd’s use of the HEATHPATH trade mark and name during the relevant period. Consequently, it had not satisfied its onus of rebutting the allegation of non use.

The hearing officer also declined to exercise discretion in favour of the registered owner and directed that, subject to any appeal, the trademark registration be removed from the Register in its entirety.

 

K-TEC, INC v HEALTHY FOODS, LLC [2016] ATMO 4 (14 January 2016)

This matter involved a refusal to allow the opponent’s request to add a new ground of opposition to its previously filed Statement of Grounds and Particulars. The underlying opposition related to an application for trademark registration of the Device mark shown below filed on 6 March 2013 for electric food processors in class 7.

trademark registration sydney spiral logo

K-Tec sought to add s 58A as a ground of opposition shortly before the hearing of the substantive opposition. The applicant objected and it became necessary to decide this preliminary issue as a separate matter.

A new ground of opposition may be added on terms that the Registrar considers appropriate only if the Registrar is satisfied it relates to information of which the opponent could not reasonably have been aware at the time of filing the statement of grounds and particulars (SGP).

The s58A ground of opposition is only applicable to a trademark application accepted under s44(4) which is the prior continuous use provision.

It was not in dispute that the evidence in answer filed by the application contained information which may allow for the application of s44(4) and this was the catalyst for the opponent seeking to add s58A as a ground of opposition. Since the evidence in answer only became available to the opponent well after filing its SGP, the only issue was whether it was appropriate to amend the SGP.

A threshold issue was whether s58A was applicable only to an application which has been accepted after examination under s44(4), or whether it was also applicable to a situation where evidence considered during opposition justifies registration under s44(4). The former involves a literal interpretation, while the latter involves a purposive interpretation. The hearing officer agreed with the opponent that the latter interpretation was appropriate and the purpose of s58A is to extend the consideration of s44(4) into the opposition context.

Whether it is appropriate to add a new ground of opposition involves an exercise of the Registrar’s discretion. The hearing officer noted that “the factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment. In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.

The hearing officer considered it was inappropriate to allow the new ground of opposition. The opponent’s failure to explain the lateness of its request to add the new ground (being some 9 months after the applicant’s evidence in answer was filed) and the resultant delay in re-scheduling the hearing on the substantive matter being likely to prejudice the applicant were strong factors against the exercise of discretion.

 

LILIANA FORZA v JAIMEX NOMINEES PTY LTD [2016] ATMO 5 (28 January 2016)

Successful opposition by Forza to an application for removal of her trademark registration for Dreamz (Stylised) as shown below alleging non use during the three year period ending on 6 May 2014. The trademark registration dated from 22 January 2009 and covered underwear in class 25.

trademark registration sydney Dreamz

The evidence filed by Forza showed use of the plain words DREAMZ LINGERIE as well as various versions of her registered trademark during the relevant period and one example is shown below

trademark registration sydney Dreamz Lingerie

Forza also operated the website at www.dreamzlingerie.com.au from 2010.

The hearing officer was satisfied Forza’s use of the plain words DREAMS LINGERIE constituted trade mark use during the relevant period as well as functioning as a business name to identify her business. This constituted use of the registered version of the trademark with additions or alterations which did not substantially affect its identity. Hence Forza had successfully rebutted the allegation of non use and the hearing officer directed that, subject to any appeal, her trademark registration was to remain on the Register.

 

COMBINED GROUP OF COMPANIES PTY LTD [2016] ATMO 6 (29 January 2016)

This concerned an application by Combined for an extension of time to file evidence in reply in its opposition to trademark registration of RAIN MATE by Reln Pty Ltd for various goods in classes 6 and 19 for surface water or effluent drainage.

The document filed by Combined’s attorneys on 3 August 2015 as evidence in reply and purporting to be a Declaration was unsigned and missing an attachment. Hence the need for an extension to correct this. The extension was made under s224, but the correct provision as pointed out by the hearing officer is Regulation 5.15. It became apparent that, rather than scan and upload a copy of the original signed Declaration via the Objective Connect file sharing facility, the attorneys attempted to upload a document combined from their electronic files and add signatures through an auto-text facility. As a result, this version was not a properly made Declaration.

The hearing officer refused the extension, but relied on the Registrar’s discretion under Regulation 21.4(b) in giving Combined two weeks to alter the document filed on 3 August 2015 so that it is submitted correctly and in the approved form of a Declaration.

 

CLEARLIGHT INVESTMENTS PTY LTD v SANDVIK MINING AND CONSTRUCTION OY [2016] ATMO 7 (29 January 2016)

Successful opposition by Clearlight to trademark registration of SANREMO filed on 20 August 2013 for various goods and services in classes 9 and 42 for mining, drilling and construction equipment and operations.

The opponent is the owner of intellectual property rights for the San Remo business which includes various trade mark registrations containing or consisting of the word SAN REMO, particularly for pasta and other food products. This business has been trading in Australia since 1950.

The applicant is the holder of intellectual property rights for the Sandvik Group which has operations in over 130 countries. SANREMO was apparently coined from ‘Sandvik Remote Monitoring’ and this trademark had been used in Australia since 2010.

The opposition was upheld under the s41 non distinctiveness ground because SAN REMO is the name of a city in Italy with a population of over 55,000 inhabitants and is a popular tourist destination with a diverse range of industries.

The hearing officer considered that “the ordinary member of the Australian public would have reason to think that the ordinary signification or the general and popular meaning of SANREMO would be as a known geographical place name rather than a shortening of ‘Sandvik remote monitoring’ “.

The evidence of use relied upon by the applicant disclosed use of SanRemo and San Remo, not SanReMo. The hearing officer was critical of the lack of corroborating invoices and other documents. Also, while the goods and services offered under the applied for trademark were quite expensive and specialised, the goods and services covered by the opposed trade mark application were still quite broad. The evidence was insufficient to show the applied for SANREMO trademark has acquired a meaning related to the applicant which over shadows its meaning as a geographical name. It was not capable of distinguishing the applicant’s goods and services.

In light of this finding, it was not necessary for the hearing officer to consider the other grounds of opposition which essentially relied on the opponent’s Australian reputation.