Majans Pty Ltd  ATMO 47 (11 July 2016)
Unsuccessful application for trademark registration of BHUJA filed on 4 November 2014 for various foodstuffs in classes 29 and 30.
The Examiner initially raised a non distinctiveness objection under s41 of the Act based on the word BHUJA being commonly used in relation to snack foods which consist of a variable mix of spicy and dried ingredients.
The applicant filed evidence asserting use of BHUJA since 1984 but the Examiner was not satisfied that this evidence supported trade mark use of BHUJA. Rather, this term was used almost exclusively alongside the applicant’s MAJANS trade mark and the examiner considered this manner of use is likely to be seen by consumers as a description of the goods provided under the MAJANS brand rather than a trade mark in its own right.
An example of the applicant’s current manner of use of BHUJA taken from its website at www.majans.com is shown below:
The hearing officer formed the view that BHUJA has no inherent adaptation to distinguish some of the claimed goods and varying degrees of non-descriptiveness (or misdescriptiveness on the face of it) in relation to other goods.
After reviewing the evidence, the hearing officer agreed with the examiner that the term BHUJA would not necessarily be perceived by the purchasing public as a trade mark.
Finally, the applicant proposed certain amendments to the specification of goods, but the hearing officer was not satisfied the amendments were sufficient to overcome the objection and also, in part, extended the scope of the specification as filed. The hearing officer also commented that if the word “bhuja” is placed on packaged food products this may be construed as misdescriptive if the packages do not in fact contain bhuja, contrary to s43 of the Act.
Rob Bowra v Industrial Progress Corporation Pty Ltd  ATMO 48 (12 July 2016)
Unsuccessful opposition by Bowra to an application for trademark registration of ROOF-SPAN filed on 4 September 2013 for metal roofing and/or walling material in class 6.
The applicant has been manufacturing and selling in Australia, since 2010, uniformly profiled, roll formed steel roofing and wall sheeting products under the trade mark ROOF-SPAN.
The opponent, through the company Industrial Panel Australia Pty Ltd (IPA), is the sole Australian and New Zealand distributor of an insulating roofing panel system containing a foam core manufactured by Emirates Industrial Panel (EIP) in Dubai and marketed in Australia since November 2011 under the trade marks ROOFSPAN, WALLSPAN and COLDSPAN.
Rather curiously, the opponent relied on the s59 lack of intention to use ground, but that was quickly dismissed by the hearing officer, particularly as the applicant had been using the ROOF-SPAN trade mark before and after the filing date.
The s60 reputation ground of opposition also filed because the opponent’s evidence was insufficient to establish an Australian reputation in its ROOFSPAN trade mark as at the 4 September 2013 filing date of the ROOF-SPAN trade mark application.
The opponent also relied on the s62A bad faith ground, on the basis that the applicant had allegedly been using the ROOF-SPAN trade mark for some time, but only applied to register this trade mark after IPA had created a market awareness of its ROOFSPAN, WALLSPAN and COLDSPAN products. However, the hearing officer indicated that reliance on this ground was misconceived and agreed with the applicant that filing the trade mark application was a means of protecting its rights given the threat of burgeoning sales of IPA’s products. Such conduct could not be construed as falling short of the standards of acceptable commercial behaviour observed by ordinary and experienced persons in the relevant field.
Chanel Limited v Tessa Sullivan  ATMO 49 (13 July 2016)
Successful opposition by Chanel to an application for trademark registration of COCO BIRD filed on 8 March 2013 for cleaning preparations for use on jewellery in class 3 and jewellery in class 14.
The applicant was not represented at the hearing and did not file submissions.
Chanel prevailed under the s44 ground by relying on its prior registrations of the trade mark COCO covering goods in class 14 including jewellery and services in class 42 connected with the retailing of various goods including jewellery and accessories.
The hearing officer had no trouble in finding that the applicant’s class 14 goods were the same as those covered by Chanel’s class 14 COCO registration and also considered that the applicant’s class 3 cleaning preparations for use on jewellery were similar to Chanel’s class 14 registered goods.
On the issue of deceptively similarity between COCO BIRD and COCO, the hearing officer noted that the Chanel’s COCO mark is wholly contained in COCO BIRD and is quite distinctive because it has no meaning in the context of the relevant goods. The addition of the word BIRD did not create a different impression to the plain word COCO. The hearing officer was satisfied that the impression or recollection which is carried away and retained would be the basis of a mistaken belief that COCO BIRD is Chanel’s trade mark, or it’s use would result in contextual confusion, and still lead purchasers to wonder whether they come from the same source notwithstanding the addition of the word BIRD.
Sleepcraft Distributors Pty Ltd v Sleepeezee Bedding Australia Pty Ltd  ATMO 50 (13 July 2016)
Successful opposition by Sleepcraft to an application for removal of its trademark registration for the series of trade mark DREAMMAKER/DREAM MAKER/DREAMAKER alleging non use for mattresses in class 20 during the three year period ending on 11 October 2014.
The hearing officer agreed with Sleepcraft that it is sufficient to rebut the allegation of non use if one of the series of registered trademarks has been used during the relevant period.
Sleepcraft relied on declarations from three customers who purchased and received DREAMAKER mattresses during the relevant period with copies of consignment notes from Sleepcraft’s records. Its other evidence included declarations from two of its trade mark attorneys stating they had attended Sleepcraft’s premises on 15 May 2014 and saw two mattresses with DREAMAKER on the labels. One of these declarations included photographs of these mattresses.
The removal applicant was critical of this evidence, but the hearing officer was prepared to accept it at face value.
The removal applicant also contended that the evidence, if accepted, reflected limited and localised use in the Melbourne metropolitan area and the trademark registration should be geographically limited. However, the hearing officer was not satisfied it would be appropriate to exercise discretion under s102(2) of the Act and impose a geographical limitation.
Le Vian Corporation v Bolton Gems Pty Ltd  ATMO 51 (15 July 2016)
Unsuccessful opposition by Le Vian to an application for trademark registration of the composite mark shown below filed on 28 June 2013 for various jewellery goods in class 14.
The opponent sought to rely on further declarations under Regulation 21.19 which were filed before and after the hearing. The applicant also sought to rely on further declarations under the same provision which were filed after the hearing. The hearing officer decided to not take any of this additional material into account.
Under the s60 reputation ground, the opponent sought to rely on its international reputation derived from sales and promotion of its CHOCOLATE DIAMONDS trade mark for brown coloured diamonds. There was also evidence of some Australian residents who purchased these diamonds while travelling in the USA. However, many examples of use relied upon showed use of CHOCOLATE DIAMONDS in conjunction with or in close proximity to the opponent’s LE VIAN Chocolatier or CARLO VIANI brands and the hearing officer characterised such use as being more descriptive of the colour and nature of the diamonds. Given the limited use and low inherent distinctiveness of CHOCOLATE DIAMONDS, the hearing officer was not satisfied the requisite reputation had been established to trigger the operation of s60.
The opponent also relied on the s42(b) contrary to law and s62A bad faith grounds of opposition, but the hearing officer rejected them as well.
CFX Funds Management Pty Ltd v Paul McMahon  ATMO 52 (19 July 2016)
Successful opposition by CFX to an application for trademark registration of DFO filed on 5 February 2014 for various transport related services in class 39.
The applicant did not file any evidence or participate in the hearing
The hearing officer was willing to overlap a technical error with the applicant’s Notice of Intention to Defend the opposition which nominated a company in addition to the applicant. However, the opposition was upheld under the s59 lack of intention to use ground.
CFX is connected with the well established DFO shopping precincts and had previously been successful in opposing registration of applications for DFO filed by a company of which the applicant was a director and secretary. Those applications covered services in classes 36 and 40.
CFX asserted that given the earlier applications for DFO for completely unrelated services, the applicant could not have formed the requisite intention to use the DFO mark for such a broad range of class 39 services, many of which required regulatory approval and licences from relevant authorities. The hearing officer agreed that this was sufficient to place the applicant’s intention to use in issue and the onus had shifted to the applicant to justify his intention to use the DFO mark for the claimed class 39 services, but he failed to do so.
Retimans (Canada) Ltd v Hachette Filipacchi Presse  ATMO 54 (26 July 2016)
This matter concerns applications by Retimans for removal of three ELLE trademark registrations of Hachette Filipacchi Presse (HFP) on the ground of non use.
This was an interim decision refusing an application by HFP to file additional evidence under Regulation 21.19. The parties relied on written submissions.
HFP had filed evidence in support of its oppositions to the removal applications which included some documents in French without English translations. It filed an English translation of a licensing agreement some one year later and requested it be considered under Regulation 21.19.
Regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. The hearing officer noted that the exercise of discretion must balance the private interests of the parties with the public interests in efficiency of proceedings and integrity of the Register. Parties should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply and this Regulation should not be perceived or used as a substitute for the now repealed provisions allowing for the filing of further evidence. The burden is on the party seeking to rely on new material under this Regulation to establish that it is reasonable to allow it.
When deciding whether to exercise discretion, the relevance and probative value of evidence sought to be adduced is of significant importance and the hearing officer considered the English translation is somewhat relevant. However, HFP made a conscious and deliberate decision not to file a translation at an earlier time, despite being put on notice that one was required if it wished to rely upon that evidence. The hearing officer was unable to conclude that the relevance of the additional evidence is critical and consequently the public interest considerations weigh more heavily into the determination. After balancing these considerations, the hearing officer was not satisfied that it is reasonable to exercise the discretion available under Regulation 21.19 to allow the additional evidence.
Bing Boy IP Pty Ltd v Bing Go Street Food  ATMO 55 (28 July 2016)
Successful opposition by Bing Boy to an application for trade mark registration of the composite mark shown below filed on 7 March 2014 for various food and beverage services in class 43.
The opponent filed evidence in support, but the applicant did not rely on any evidence. Neither party took part in the hearing or filed submissions.
The opponent relied on its prior trademark registrations for the BING BOY word mark and the composite mark shown below also covering various food and beverage services in class 43.
The opposition was upheld under the s44 ground. The hearing officer had no hesitation in finding the respective services to be similar and found the applicant’s mark to be deceptively similar to the opponent’s composite mark, but not the BING BOY word mark.
Brock Beauty Inc.  ATMO 57 (29 July 2016)
The applicant was unsuccessful in overcoming an examination objection to its application for trademark registration of DERMERA filed on 3 November 2014 for body and beauty care cosmetics in class 3 and various nutritional supplements in class 5.
The examiner cited a prior trademark registration for DERMIRA covering pharmaceutical preparations and treatments as well as pharmaceutical preparations and treatments for skin care in class 5 and various pharmaceutical research and development services in class 42.
The hearing officer firstly considered whether the applicant’s goods were similar to those covered by the cited mark and noted that ‘pharmaceutical preparations’ is a broad expression. He found that the applicant’s goods in classes 3 and 5 were similar to the class 5 pharmaceutical preparations covered by the cited mark.
When comparing the respective DERMERA and DERMIRA trade marks, the hearing officer had no hesitation in finding them to be deceptively similar. They are visually very similar and any difference in pronunciation would be unnoticeable to the untrained ear.
The applicant sought to rely on honest concurrent use of its DERMERA mark, but the hearing officer was not satisfied the evidence relied upon could support this. The applicant could show some 2-3 years of use of the DERMERA mark in Australia prior to filing its trademark application, but there was a relatively small amount of product advertised and sold in Australia. Given the close similarity of the DERMERA and DERMIRA trade marks, there is a high likelihood of deception or confusion and this was a significant factor against exercising discretion in the applicant’s favour.
Pacific Incubator of Intellectual Property Ltd v Wentworth Annexe Ltd  ATMO 58 (29 July 2016)
Unsuccessful opposition by Pacific Incubator (PIIP) to an application for trademark registration of the INCUBATE Logo trade mark shown below filed on 2 December 2013 for various business services in class 35 including those relating to the development of inventions and the commercialisation of goods.
PIIP’s evidence indicated it is a group training organisation which places young adults into tertiary placements through traineeships and apprenticeships in creative industries across film, music, fashion, marketing, design, gaming and software. It owned trade mark registrations for SYDNEY INCUBATOR and INCUBATOR in class 35, but they were removed from the Register in November 2015 due to non-use. PIIP launched its INCUBATOR services in September 2010, but its examples of use were limited to the period 2010 to 2012.
The applicant operates the ‘Incubate Program’ in conjunction with the University of Sydney Union. This is a start up accelerator and entrepreneur program for students, staff and alumni of the University of Sydney and associated universities which provides business advisory, consultancy, assistance, marketing and promotional services to student and alumni entrepreneur groups as well as providing funding and free work space for them.
Under the s44 ground, PIIP relied on its prior trade mark registrations, but the hearing officer noted that this ground needs to have regard to the state of the Register at the time of the opposition hearing and, since PIIP’s registrations had already been removed from the Register, they ceased to be an impediment.
The s60 reputation ground also failed because the evidence relied upon by PIIP was not capable of supporting any relevant Australian reputation derived from use of the INCUBATOR trade mark.
PIIP also contended that the applicant’s use of the applied for mark would be contrary to law in that it would contravene the consumer protection provisions of the Australian Consumer Law and passing off. However, since PIIP failed under the s60 ground, it could also not satisfy the higher burden of proof to support the s42(b) contrary to law ground.
The s59 intention to use and s62A bad faith grounds of opposition also failed.