Trade Mark News & Information

Trademark Registration-October 2016-ATMO Decisions

Treadwell Original Drifters LLC and Prism Music Group Ltd v WL Trout Promotions Pty Ltd [2016] ATMO 80 (5 October 2016)

Treadwell and Prism were successful in defending their trademark registration for THE DRIFTERS against a non use removal application and in opposing an application for trademark registration of BILLY WISHINGTON’S DRIFTER’S filed by Trout.

Background

Treadwell acquired rights to the name of the musical group THE DRIFTERS in or about 1954 and licensed Prism to use THE DRIFTERS trade mark. Prism is the management company for the group. Over the years, more than 65 artists have been members of this group which was inducted into the Rock and Roll Hall of Fame in 1988. The group had a UK tour in 2014 and their songs continue to be played on Australian radio stations. Their albums and songs are currently available in Australia through JB HiFi, iTunes and Amazon.

The musical group BILLY WASHINGTON’S DRIFTERS was formed by Charlie (Billy) Washington, who claimed to be one of the original musicians from the original THE DRIFTERS group. The BILLY WASHINGTON’S DRIFTERS group toured Australia in 1976 and subsequently took up Australian residency. This group has continued to perform in Australia and overseas since then.

Treadwell’s Australian trademark registration for THE DRIFTERS dates from 11 November 2003 and covers “Musical performance services; live band performance; concert services; dance performance services; provision of live entertainment and recorded entertainment; performance and production of radio and television programmes; performance and production of films and video tapes; publication of books” in class 41.

Trout filed, on 13 January 2014, an application for trademark registration of BILLY WASHINGTON’S DRIFTER’S (Stylised) as shown below for various entertainment related services in class 41

Trademark Registration Billy washingtons Drifteres

This application was accepted under the s44(4) ‘prior continuous use’ provision. Treadwell and Prism opposed registration of it on 5 August 2014.

Trout filed a non use removal application on 20 August 2014 seeking partial removal of THE DRIFTERS registration in respect of “musical performance services; live band performance; concert services; dance performance services; provision of live entertainment” alleging non use during the three year period ending on 20 July 2014.

Application for partial removal of THE DRIFTERS trade mark registration

The delegate was satisfied there had been relevant use of THE DRIFTERS trade mark in connection with the provision of recorded entertainment in Australia, but not for live entertainment services subject of the partial removal application. Nonetheless, the delegate exercised discretion in favour of leaving this mark on the Register and refused the removal application.

Opposition to BILLY WASHINGTON’S DRIFTER’S trade mark application

The delegate was satisfied that The DRIFTERS trade mark had acquired an Australian reputation in respect of a musical group and the services generally associated with musical groups. While it may have waned, it remains significant. Also, use of the BILLY WASHINGTON’S DRIFTER’S trade mark is likely to deceive or cause confusion. The presence of BILLY WASHINGTON’S and the stylised font used by Trout do not prevent the likelihood of confusion. The reputation of THE DRIFTERS trade mark overrides the application of the honest concurrent use and prior use provisions under s44 of the Act.

 

Bega Cheese Limited v Quesos Vega Soltuelamos, SL. [2016] ATMO 81 (10 October 2016)

Unsuccessful opposition by Bega Cheese to trademark registration of VEGA MANCHA as shown below filed on 27 December 2013 for cheese with appellation of origin Manchego in class 29

Trademark Registration Vega Mancha

The opponent relied on its prior use and registration of the trade mark BEGA in respect of cheese and other dairy products.

The s44 ground of opposition failed because the delegate did not regard the applied for VEGA MANCHA trade mark to be deceptively similar to any of the opponent’s trademark registrations for BEGA. The delegate noted:

Visually and aurally, the letter “V” at the beginning of the holder’s trade mark may be pronounced similarly to the “B” in the opponent’s trade marks. However, visually V and B are very different at the beginning of a trade mark. The addition of the word MANCHA which has no generally understood meaning by the average monolingual Australian consumer also adds another significant layer of dissimilarity between the trade marks which sufficiently differentiates the holder’s trade mark from the opponent’s BEGA trade marks. Particularly when the word BEGA is a well-known and well-understood geographical area in Australia which the Australian public is aware of, given the evidence put before me by the opponent. VEGA MANCHA has no similarly well-understood meaning in Australia. I consider it is unlikely that consumers would see goods branded with VEGA MANCHA as being or being related to the opponent’s BEGA branded goods.

While the delegate was satisfied the opponent had demonstrated a substantial Australian reputation in its BEGA trade mark, the s60 ground of opposition also failed because the delegate did not consider there to be a likelihood of confusion given the lack of similarity between the respective marks.

 

H. Young (Operations) Ltd v Universal Protein Supplements Corporation [2016] ATMO 82 (11 October 2016)

Successful opposition by H Young to a s92 application for removal of its ANIMAL Logo trademark registration dating from 2 February 1996 shown below alleging non use during the three year period ending on 24 November 2014. The registration covered various good in classes 9, 14, 16, 18, 20 and 25.

Trademark Registration Animal Logo

This case illustrates the uncertainty in non use actions and the exercise of discretion despite the underlying policy of the legislation to remove unused marks from the Register.

H Young relied on statements made in Declarations by its Finance Director and a Sales Director of Twinfin Limited (being a UK company authorised to sell clearance stock), invoices from Twinfin to Gazal Apparel in Australia, invoices from Textrade Ltd (a Maltese company) and H Young to APAC Sale Group (being a foreign company registered in Australia) with assertions that APAC sells goods in Australia via flash sales websites, overseas product catalogues and its Corporate Guidelines indicating that all its products are to bear a Genuine Product Graphic (being a combination of logos which contain the registered mark).

The invoices were redacted and did not show the registered mark. There was no evidence from Gazal Apparel, APAC or any other person corroborating actual sales or promotion in Australia of any goods by reference to the registered mark. H Young did not rely on the invoices themselves as constituting use of the registered mark. Rather, the delegate was asked to infer relevant use from the evidence in its entirety.

The delegate noted that “whilst I agree that some criticism of the Removal Opponent’s evidence is warranted, particularly because it relies upon a number of inferences and the Removal Opponent could have done more to show that those inferences should be drawn, I nonetheless consider that it is sufficient to establish use of the Trade Mark within the relevant period in respect of a variety of clothing, bags, accessories and notebooks.”

The delegate was prepared to infer use from the invoices and further infer that the registered mark was applied to the relevant goods based on the Corporate Guidelines. The Genuine Product Graphic reflected three different iterations of H Young’s ANIMAL Logos represented together in a single graphic and the delegate accepted that this Graphic reflected use of the registered mark with additions or alterations that did not substantially affect its identity.

The delegate also comment that “I bear in mind also that this evidence is viewed in the context of the balance of evidence indicating that the ANIMAL brand is a relatively well-known brand of action sportswear in the UK, and not a relatively unknown or obscure brand from a foreign jurisdiction.” However, H Young’s evidence did not include any financial or other information to substantiate its ANIMAL brand as being well known, let alone having spill over reputation in Australia.

There was no evidence at all as to use of the registered mark for any goods in classes 9 or 20, yet the delegate was prepared to exercise discretion in favour of H Young and leave its mark on the register for these goods. The delegate considered removal of the registered mark for the class 9 goods would likely lead to deception or confusion in circumstances where H Young has established use in class 25 in the context of the action sportswear market. The class 20 goods were retained based on the delegate considering there to be a possibility of confusion based on the trend of clothing brands to also sell a range of homewares and other decorative items, despite there being no evidence of this trend and it being based on the delegate’s own knowledge.

 

Murray Carter v Liberty Procurement Co. Inc [2016] ATMO 83 (14 October 2016)

Unsuccessful opposition by Carter to a s92 application for removal of the Bed Bath & Beyond Logo trademark registration in the name of Brands Limited dating from 20 June 2003 shown below alleging non use during the three year period ending on 21 April 2014. The registration covered textiles, bed and table covers in class 24.

Trademark Registration Bed Bath Beyond Logo

Carter was a co-founder of the Bed Bath & Beyond business which has been operating in New Zealand as a retailer of manchester products. It rebranded from Linen For Less in 1996 growing to having 52 retail stores and, since September 2012, operates the website at www.bedbathbeyond.co.nz . The use of the Linen For Less tagline was phased out some time after 2003 and the form of the mark currently used is shown below:

Trademark Registration Bed Bath Beyond

Liberty is connected with Bed Bath & Beyond Inc in the USA which operates a chain of retail stores selling homewares in the USA, Canada, Mexico and Puerto Rico. It also sells its homewares in other countries, including Australia, through distributors and its website. Its evidence included website sales to Australian customers from November 2014 to April 2015.

There was no evidence of any actual sales by the NZ business of relevant goods in Australia during the relevant three year period.

The evidence disclosed that, prior to filing of the removal application, the website of the NZ business indicated that it only shipped within New Zealand and not to Australia. This was changed after filing of the removal application to include reference to Australia.

The delegate formed the view that the mark being used by the NZ business was not use of the registered mark or of that mark with additions or alterations not substantially affecting its identity. The omission of the Linen For Less tagline was a material difference. Even if this was regarded as use of the registered mark, the use on the New Zealand website does not qualify as Australian use. There was no evidence that this website was specifically directed or targeted at Australian consumers during the relevant period.

The delegate was also not satisfied that the preparations of the NZ business to enter the Australian market were sufficiently advanced during the relevant period and there were no obstacles to use.

Carter and the NZ business also failed to discharge the onus of positively satisfying the delegate that it is reasonable to allow the registered mark to remain on the register and hence the delegate declined to exercise discretion.

 

HBI Branded Apparel Enterprises, LLC v Fratex Industria Comercio LTDA [2016] ATMO 89 (15 October 2016)

Successful opposition by HBI to a s92 application for removal of its Track n Field Logo trademark registration dating from 24 June 2005 shown below alleging non use during the three year period ending on 21 December 2014. The registration covered fabric in class 24 as well as clothing, footwear, headgear in class 25.

Trademark Registration Track n Field

The evidence substantiated Australian use of the registered mark for clothing in the nature of sportswear and active apparel during the relevant three year period.

On the exercise of discretion, the delegate accepted that sportswear and active apparel were similar to other class 25 goods, but not similar to fabrics in class 24. However, given HBI’s use of the registered mark since 1973 and the considerable quantities of goods sold under this mark, there is a real likelihood of confusion if the registration was removed for fabric in class 24. Hence, it was reasonable to exercise discretion in favour of HBI. Significantly, the removal applicant did not file any evidence or submissions.

 

Centennial Park Cemetery Authority v KSAMS Nominees Pty Ltd [2016] ATMO 85 (16 October 2016)

Successful opposition by KSAMS to trademark registration of the Centennial Park Florist Logo shown below filed on 1 August 2014 for flower retail services in class 35

Trademark-Registration Centennial Park Florist Logo

KSAMS prevailed under the s58 ownership ground. It and its predecessors had operated a florist shop known as CENTENNIAL PARK FLORIST, CENTENNIAL FLORIST & GIFT BASKETS and CENTENNIAL FLORIST since 1938 which was directly across the road from the applicant’s cemetery and crematorium in Adelaide, South Australia. KSAMS acquired this business under a Contract of Sale dated 25 March 2009 which included rights to the goodwill in the business and unregistered trade marks, as well as to the domain name centennialflorist.com.au . The business signage confirmed use of CENTENNIAL PARK FLORIST as a trade mark since at least 1982. An example of this signage is shown below:

Trademark Registration Centennial Park Florists Signage

The applicant and its predecessors in business had operated a cemetery called Centennial Park since 1936. It had not commenced used of the applied for mark for flower retailing services.

The delegate was satisfied that KSAMS has traded under its CENTENNIAL PARK FLORIST trade mark since at least 2009 and that its predecessor in title was trading under that same trade mark since at least 1982 which was well before the applicant’s filing date. On the substantial identity issue, the delegate concluded:

A comparison of the opponent’s trade marks and the applicant’s trade mark creates an impression of resemblance. The trade marks of the parties are comprised of the same essential features. Each trade mark contains the identical words CENTENNIAL PARK FLORIST and a rose device. While the fonts of the trade marks differ and the opponent’s second trade mark contains the word FLORISTS rather than FLORIST, these are not differences which substantially affect the identity of the trade marks. The same applies to the rose device. The rose devices are slightly different but all can only be described as rose devices and the addition of a rose device to the identical words CENTENNIAL PARK FLORIST creates a total impression of resemblance. I find that the respective trade marks are substantially identical.

 

My Brilliance Pty Ltd v Samsung Electronics Co. Ltd. [2016] ATMO 84 (17 October 2016)

Unsuccessful opposition by My Brilliance to trademark registration of the Color Brilliance Logo shown below filed on 31 January 2014 for television receivers, monitors, LCD panels and light emitting diode displays in class 9

Trademark Registration Color Brilliance Logo

The s41 distinctiveness ground of opposition failed with the delegate concluding:

The Trade Mark consists of the words COLOR BRILLIANCE and a device element being an oblong filled with a spectrum of colours and two curved white lines. The words COLOR BRILLIANCE do make some reference to the goods. However at most they allude to the quality of the images produced by the goods; that is that they are bright and colourful. The device is represented in a relatively high level of abstraction. It is not a clear or obvious depiction of a television. In my opinion the Trade Mark, when taken as a whole, does not form part of the common heritage and it is unlikely that other traders, without improper motives, would wish to use it.

Under the s58ownership ground, the opponent relied on prior use of various trade marks containing the word BRILLIANCE with the closest to the applied for mark being a composite mark containing the words BRILLIANCE COLOUR with a coloured pinwheel design element. However, this was not close enough to be substantially identical to the applied for mark; so this ground also failed.

Under the s44 ground, the opponent relied on various of its prior registered marks containing or consisting of the word BRILLIANCE, but the delegate was not satisfied the applied for mark was deceptively similar to any of them, even registrations for the word mark BRILLIANCE and there were also differences in the respective goods/services.

Under the s60 reputation ground, the opponent relied on its use sine 2001 of various trade marks containing the word BRILLIANCE in respect of various personal and social consultancy services, as well as printed and audio-visual media, but the evidence was insufficient to demonstrate a sufficient reputation to trigger the operation of s60. Even if reputation was established the differences in the respective trade marks and/or the relevant goods/services were too great to give rise to a likelihood of confusion.

The opponent also relied on the s42(b) contrary to law and s 43 confusing connotation grounds of opposition, but they were quickly dismissed by the delegate.

 

Bickfords Trading Pty Ltd v Chia Limited [2016] ATMO 90 (25 October 2016)

Unsuccessful opposition by Bickfords to trademark registration of the CHIA Logo shown below filed on 4 August 2014 for various snack bars in class 30 and fruit drinks and mineral waters in class 32.

Trademark Registration Chia Logo

Under the s44 ground, Bickfords relied on its prior trademark registration for CHIAHH covering non-alcoholic beverages in class 32, but the delegate did not consider the applied for mark to be deceptively similar to CHIAHH. The word “chia” is commonly understood to refer to a type of seed which is a popular ingredient in drinks and the device element in the applied for mark takes on greater significance. Conversely, the addition of the two letters “H” at the end of the CHIAHH mark would have a significant impact upon the impression it leaves. Consequently, the delegate was not satisfied that consumers would be likely to be confused or deceived as to whether the respective products come from the same source.

Under the s60 reputation ground, Bickfords relied on its use of the trade marks CHIAHH and VITA CHIAHH but this commenced only about one month before the applicant filed its trade mark application and sales and promotion were relatively modest, as well as being localised to South Australia. The delegate was not satisfied Bickfords had acquired a sufficient reputation in these trade marks, so this ground of opposition also failed.

Under the s43 ground, Bickfords argued that the presence of CHIA in the applied for mark connotes the Chia seed and the goods are not limited to those made from or containing Chia. While the delegate agreed with this connotation, it did not necessarily mean that it is one that would deceive or confuse and there is no evidence to suggest the applicant’s products do not contain Chia seeds. Hence, the delegate did not consider it likely for there to be any deceptive or confusing connotation in the applied for mark.

 

Volvo Trademark Holding AB v Timken UK Limited [2016] ATMO 91 (26 October 2016)

Successful opposition by Volvo to trademark registration of REVOLVO filed on 9 September 2010 for various bearings in classes 7 and 12 as well as related consultancy services in class 42.

Volvo prevailed under the s44 ground of opposition by relying on its prior trademark registrations for VOLVO covering the same or similar goods and services.

The applicant contended that the target market for its goods are engineers and technicians, but its specification is not so limited and the delegate considered the comparison of the respective marks in the context of a broader target market.

The delegate also accepted that “it is clear enough from the Opponent’s evidence that VOLVO has a sufficient ‘degree of notoriety or familiarity’ in Australia such that judicial notice may be taken, and therefore is a factor in the present enquiry” and “the well-known element VOLVO is contained in both trade marks, which may indeed contribute to the potential for confusion.”

The delegate concluded that, given the aural and visual similarity of the respective VOLVO and REVOLVO trade marks, there is a real, tangible danger of confusion.

The applicant asserted that it had sold branded goods in Australia since at least 2000, but there was no evidence on this and so the applicant could not rely on the honest concurrent use or prior continuous use provisions to support registration of its REVOLVO mark.

 

Davley Building Pty Ltd v Granny Flats Australia Pty Ltd [2016] ATMO 92 (27 October 2016)

Unsuccessful oppositions by Davley to trademark registration of the Granny Flats Australia Logo shown below filed on 12 April 2013 for various building and construction services in class 37 and related advisory and building design services in class 42

Trademark Registration Granny Flats Australia Logo

Davley primarily relied on its prior use of GRANNY FLATS WA and use of grannyflatswa.com as a business name and domain name. The delegate concluded Davley had established a limited reputation in the relevant market, but insufficient for there to be a likelihood of deception or confusion. The delegate noted the descriptive nature of the respective trade marks and that the purchasing decision would typically be made with caution given the level of investment in new building works. Furthermore, the respective businesses had been operating competing websites for several years without confusion. Consequently the s60 reputation ground of opposition failed.

Davley also relied on the s58 ownership ground, but the delegate formed the view that Davley’s GRANNY FLATS WA Logo mark was not substantially identical to the applied for mark and concluded “the common element ‘Granny Flats’ between the composite trade marks has a low level of inherent adaptation to distinguish the services. The result being that the distinctive additions to the respective trade marks are more likely to substantially affect the identity of the trade marks”.

Davley also relied on the s42(b) contrary to law ground of opposition and argued that use of the applied for mark would be likely to mislead or deceive consumers under the Australian Consumer. However, this was quickly dismissed by the delegate.

 

Shophouse LLC v David Loh [2016] ATMO 93 (31 October 2016)

Unsuccessful opposition by Shophouse to trademark registration of the SHOP HOUSE KITCHEN Logo shown below filed on 11 June 2013 for various food and beverage related services in class 43

Trademark Registration Shop House Kitchen Logo

The applicant commenced use of this mark in connection with a restaurant in Melbourne which opened on 23 May 2013.

The opponent has, since September 2011, operated various restaurants in the USA using the trade marks shown below:

Trademark Registration Shophouse South East Asian Logo   and   Trademark registration South east Asian Shophouse Logo

However, apart from the existence of a website and online articles which can be accessed from Australia, there was no evidence indicating that the opponent has undertaken any promotional activities in Australia. Analytics for this website disclosed a modest number of visits from Australia. Consequently,, the delegate was not satisfied the opponent had demonstrated an Australian reputation as at 11 June 2013 to trigger the operation of s60; so that ground of opposition failed.

The opponent also argued that use of the applied for mark would be misleading or deceptive under the Australian Consumer Law or constitute passing off. However, given the failure of the opponent to establish reputation under s60 ground, it could not satisfy the higher evidentiary threshold under the s42(b) contrary to law ground.

Finally, the opponent also relied on the s62A bad faith ground of opposition and argued that the applicant’s conduct was designed to gain a benefit by appropriating its Shophouse Kitchen indicia together with an orange and white colour scheme. However, the applicant expressly denied any knowledge of the opponent at the time of adopting the applied for mark and there were no other circumstances casting doubt upon the statements to this effect. Hence, this ground of opposition also failed.