Trade Mark News & Information

Trademark Registration-September 2016-ATMO Decisions

Black Dog Institute v Black Dog Ride Pty Ltd [2016] ATMO 66 (1 September 2016)

Unsuccessful opposition by Black Dog Institute (BDI) to trademark registration of BLACK DOG RIDE (Stylised) filed on 21 June 2012 for organising charitable fund raising events in class 41 and on 13 December 2012 for hats, clothing in class 25.

Unsuccessful cross opposition by Black Dog Ride (BDR) to trademark registration of BLACK DOG filed on 4 April 2013 for various services in classes 35, 36, 41 and 42.

BDI was established in February 2002 and provided a range of healthcare programs, educational services and charitable fundraising for the treatment of mood disorders and depression.

BDR has, since 26 July 2009, been organising charitable motor cycle rides to raise awareness of depression and suicide prevention. Indeed, it partnered with BDI in fund raising for mental health services up until the end of 2012 when relations broke down after BDR was planning to hold a charity event which did not benefit BDI, giving rise to confusion.

For BDI’s oppositions, the s58 ownership ground failed because the delegate did not consider BLACK DOG RIDE was substantially identical to BLACK DOG INSTITUTE or BLACK DOG. Under the s60 ground, the delegate accepted that BDI had established an Australian reputation in its various BLACK DOG INSTITUTE trade marks in the field of health professional, training and education. However, the instances of confusion occurred after the filing dates and the delegate was not satisfied this confusion was attributable to BDI’s reputation. Rather, the term ‘Black Dog’ is “now an expressive metaphor and common parlance when referring to or describing depression”. The confusion was more likely attributable to “the fact that both parties adopted a striking and allusory term which they both effectively made use of when publicizing their respective services and events in relation to depression which has only strengthened the association of the words BLACK DOG with depression in the mind of the Australian public”. BDI also relied on s43 and s62A, but those grounds also failed.

BDR’s opposition to BDI’s BLACK DOG mark relied on the s41 lack of distinctiveness ground and noted that this term is defined, in figurative use, as clinical depression. However, the delegate concluded: “I am not satisfied that other traders are likely to require to use the expression BLACK DOG regard to the provision of the services BDI has listed in the ordinary course of conducting their business. They may ‘want’ to use it but they do not require use of the expression. The jump between the expression BLACK DOG and the provision of those services listed in class 35, 36, 41 and 45 is just too large and intangible. While I can appreciate how a link between the metaphorical meaning attributable to BLACK DOG and the services could potentially be drawn, it is simply not enough to establish the section 41(5) ground of opposition. I do not believe that other traders dealing in these services (which are quite broad and not specifically limited to depression) would need to use BLACK DOG as a trade mark during the ordinary course of business. Therefore, I am satisfied that BDI’s trade mark is inherently adapted to distinguish the designated services”.

 

Grew Holdings Pty Ltd v Adriano Goldschmied LLC [2016] ATMO 65 (2 September 2016)

Unsuccessful opposition by Grew Holding to trademark registration of AG ADRIANO GOLDSCHMIED filed on 22 April 2010 for clothing, footwear, and headgear in class 25.

Grew relied on earlier use and registration of the trade marks shown below for the same or similar goods:

Trademark Registration AG Logo     and     Trademark Registration Arthur Galan AG Logo

The s44 ground failed because the delegate did not consider the applied for AG ADRIANO GOLDSCHMIED trade mark to be deceptively similar to either of Grew’s earlier registered marks. The presence of the words ADRIANO GOLDSCHMIED and ARTHUR GALAN could not be discounted and the fair and notional use of the applied for trade mark does not extend to the use of the letters AG as represented in Grew’s registered marks.

Under the s60 ground, the delegate was satisfied Grew had established an Australian reputation through use of ARTHUR GALAN in combination with the AG Logo as represented above,  but not in the AG Logo by itself. However, Grew could not establish a likelihood of confusion due to the differences in the respective marks. The names ARTHUR GALAN and ADRIANO GOLDSCHMIED provided a ready means of distinction between them. There was an instance of actual confusion in the evidence arising from a pair of the Applicant’s jeans being returned to Grew in error after a photo shoot. The labelling included a tag with the letters AG in a circle. However, the delegate attributed little weight to this evidence and noted it occurred some two years after the filing date.

 

Levi Strauss & Co v Yugen Kaisha Shimura (Shimura, Ltd.) [2016] ATMO 67 (2 September 2016)

Successful opposition by Levi Strauss to trademark registration of the composite mark containing stitching on a pocket with the letters BS as shown below filed on 21 March 2014 for various clothing, headwear and footwear in class 25.

Trademark Registration Pocket Stitching Logo

The opposition was upheld under the s44 ground with the delegate finding the applied for mark was deceptively similar to at least the following two registered marks owned by Levi Strauss and covering similar goods:

Trademark Registration Levi Pocket Stitching Logo     and     Trademark Registration Levi Curved Stitching Logo

 

Climate Master (Australia) Pty Ltd v Seeley International Pty Ltd and FF Seeley Nominees Pty Ltd [2016] ATMO 68 (6 September 2016)

Successful opposition by Climate Master to trademark registration of CLIMATE MASTERS OF SEELEY INTERNATIONAL filed on 12 December 2013 for various advertising and business services in class 35, education and training services in class 41, and accreditation and certification services in class 42.

The opposition was upheld under the s60 ground with Climate Masters relying on reputation and confusion derived from use of its CLIMATE MASTERS word mark, and particularly a Logo version of this mark shown below, since July 1997 in connection with the sale, installation, repair and maintenance of heating and cooling systems. These services were primarily provided in the Australian Capital Territory (ACT) area.

Trademark Registration Climate Master Logo

Seeley’s services were directed to the operation of its dealer accreditation program with the services to be accredited and certified relating to heating and cooling solutions of the kind provided by Climate Masters. The evidence also included claims of actual confusion with Climate Masters receiving enquiries concerning products, services and promotions offered by Seeley after it commenced use of the applied for mark in October 2013.

The delegate commented that “I was surprised and remain perplexed by the Applicant’s argument that the added words, “OF SEELEY INTERNATIONAL”, would dispel any likelihood of confusion. Anglo-Australian trade mark law has never required the identity of a trade mark owner to be known by the public and those members of the relevant public, familiar with the Logo Mark but knowing not the business entity behind it, may very likely indeed on seeing the Trade Mark in use, have reason to wonder whether the services offered under the Logo Mark had, all along, been services provided by the Applicant”.

Seeley also argued that, as a fall-back position, its trade mark application could proceed with a limitation to exclude the ACT. However, the delegate declined to do so and noted: “the Opponent need only prove, as it has done, a reputation in Australia, not an Australia-wide reputation. The Trade Mark, if registered even with such a limitation, is still capable of causing confusion.”

 

BlendTec Inc. v Healthy Foods LLC [2016] ATMO 69 (7 September 2016)

Unsuccessful opposition by BlendTec to trademark registration of the Spiral Device shown below filed on 6 March 2013 for electric food processors in class 7

Trademark Registration Spiral Device

Under the s44 ground, BlendTec relied on its prior registration for the trademark shown below dating from 21 December 2012 and covering similar goods:

Trademark Registration BlendTec Spiral

The delegate found in favour of BlendTec on the deceptive similarity issue, but then concluded that the applicant’s evidence disclosed use of the applied for mark from March 2012 and was sufficient to activate the s44(4) ‘prior continuous use’ provision.

BlendTec also relied on the s60 reputation ground which can override s44(4), but the delegate was not satisfied the evidence demonstrated a sufficient Australian reputation acquired from use of its registered mark.

The s58 ownership ground also failed because the applied for mark was not substantially identical to BlendTec’s registered mark.

BlendTec also sought to belatedly amend its Statement of Grounds and Particulars to add the s58A ground of opposition, but that was resisted by the applicant and ultimately refused. The delegate did comment, in passing, that the evidence would not have supported this ground in any event because it did not conclusively show BlendTec used its registered mark in Australia before the applicant’s use.

 

Jackel International Limited v Nurture, Inc [2016] ATMO 70 (12 September 2016)

Partly successful opposition by Jackel to an application for removal alleging non use of the registered HAPPY BABY trade mark during the 3 year period ending 10 April 2012. The trademark registration covered various goods in classes 3, 5, 16 and 28.

Jackel was able to demonstrate use in relation to disposable bibs in class 16 as well as some goods in other classes not covered by the relevant trade mark registration and sought a favourable exercise of discretion to retain the registration for some other goods in classes 5, 16 and 28. However, the delegate declined to exercise discretion and considered that it is not in the public interest to leave a mark on the Register which has not been used for the registered goods (apart from disposable bibs) for some 20 years. Furthermore, Jackel has other registrations for its HAPPY BABY trade mark in classes 10, 21, 24 and 25.

 

Exhibitions and Events Australia Pty Ltd [2016] ATMO 71 (15 September 2016)

The applicant was unable to overcome an objection raised during examination that its application for trademark registration of HOME SHOW filed on 6 February 2015 for services in classes 35 and 41 relating to the organisation of trade shows and other events lacked capacity to distinguish these services.

The applicant relied on supporting evidence of use since 1975, but much of this showed use of the words HOME SHOW with the name of a sponsor or in combination with a graphic device.

The delegate considered the ordinary signification of ‘home show’ is an event at which exhibitors display goods or services relating to the home. Having determined this meaning, the delegate then went on to consider whether other traders might legitimately need to use these words for their services and decided this in the affirmative because the words ‘home show’ are a most apt way to describe, succinctly and exactly, the essential characteristic of the designated services. The delegate concluded these words are not to any extent inherently adapted to distinguish the applicant’s services. The fact that no other trader was using these words was irrelevant.

The delegate then considered the evidence of use relied upon and noted that use does not always establish distinctiveness. In this case, the presence of a sponsor’s name had the effect of substantially diluting any trade mark significance attaching to the words ‘home show’, notwithstanding these words were given prominence in marketing materials. The evidence also included declarations from exhibitors stating they associated the words ‘home show’ with the applicant, but the delegate noted that association evidence on its own does not prove distinctiveness, rather the evidence must establish that the public has been educated to understand the relevant sign as an identifier of the origin of the relevant goods/services.

The evidence was insufficient to satisfy the delegate that the words ‘home show’ are acting, in their own right, as a badge of origin and the trade mark application was refused.

 

Tomkin Australia Pty Ltd v Jab Design Pty Ltd [2016] ATMO 73 (15 September 2016)

Unsuccessful opposition by Tomkin to trademark registration of JAB design Logo as shown below filed on 20 February 2014 for plastic trays in class 21

Trademark Registration JAB design

Rather curiously, the opponent did not file any evidence and only the applicant filed evidence in answer. The opponent requested the Registrar to issue a notice to the applicant to produce certain documents, but this request was filed a little over one week before the hearing and the Registrar declined to issue it.

It appears that persons connected with the applicant were former employees of the opponent. The opponent relied on grounds of opposition under s58 ownership, s60 reputation, s42 contrary to law and s62A bad faith but, since it did not file any evidence, could not satisfy its onus of establishing any ground of opposition.

 

Ferngrove Pharmaceuticals Australia Pty Ltd. [2016] ATMO 74 (20 September 2016)

The applicant was unsuccessful in overturning a decision to revoke acceptance of its application for registration of the trade mark shown below filed on 11 March 2016 for a broad range of goods in classes 1, 3, 5, 29, 30 and 31

Trademark Registration Australian Made Owned Logo

The grounds for revoking acceptance were that this composite mark was an ordinary arrangement of non-distinctive elements (s41) and that it was deceptively similar to the prior registered certification trade mark shown below owned by Australian Made Campaign Limited and covering similar goods

Trademark Registration Kangaroo Triangle Logo

Two factors must be satisfied before acceptance may be revoked. Firstly, the Registrar must be satisfied that the application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the application was accepted. Secondly, that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist.

The delegate considered it reasonable to revoke acceptance based on the s41 distinctiveness ground, but not under the s44 ground where the overall resemblance between the respective marks is quite low.

 

Crown Melbourne Limited v Steven Tintor [2016] ATMO 75 (22 September 2016)

Unsuccessful opposition by Crown to trademark registration of THE 2ND HAND CROWN filed on 16 May 2013 for pawn brokerage in class 36.

The opponent operates various businesses in the fields of entertainment, gambling and accommodation including the Crown Entertainment Complex in Melbourne. It also operates physical and online retails stores selling Crown merchandise and provides vouchers that can be redeemed for gaming or cash, as well as safe custody boxes, cheque cashing/credit facilities, customer loyalty programs and stored value cards particularly ancillary to its casino operations.

There is a history of various disputes between the parties concerning other trade mark applications filed by the applicant or a related company, 1800 Supply Pty Ltd and the crown.com.au domain name held by that related company.

Both parties filed late evidence, but the delegate decided to not take that into account.

Under the s44 ground, the opponent relied on a number of its prior trade mark registrations containing or consisting of the word CROWN. Most of its combination word marks were in the form of the word CROWN followed by a descriptor or place name and many of them did not cover similar services or closely related goods to pawn brokerage services. The delegate considered the applied for mark conveys an image of an old object which is conceptually different to each of the opponent’s registered marks and consequently it is unlikely for ordinary persons to be caused to wonder whether the applicant’s mark is an example of another brand extension of the opponent’s CROWN house mark.

The s60 reputation ground also failed. The delegate accepted the opponent has demonstrated a strong reputation through use of its CROWN mark for entertainment, gambling and accommodation services. However, this reputation is not such that there exists a likelihood that use of the applied for mark for pawn brokerage services would cause deception or confusion in the marketplace.

The opponent also relied on the s42(b) contrary to law ground based on use of the applied for mark being likely to mislead or deceive under the Australian Consumer Law and/or passing off. However, since the s60 ground failed, the opponent could not satisfy the higher evidentiary onus to establish the s42 ground.

Under the s59 ground, there is a presumption that the applicant intends to use the applied for mark and the opponent’s evidence was insufficient to shift the evidentiary onus to the applicant to justify his intention. Even if that presumption had been weakened, the delegate would have accepted the applicant’s explanations as supporting an intention to use the mark.

 

Sushi Train (Australia) Pty Ltd v RGR Norman Pty Ltd as trustee for the Norman Family Trust [2016] ATMO 76 (22 September 2016)

Successful oppositions by Sushi Train to trademark registration of Atoma Sushi Train and the Sushi Train Atoma Logo mark shown below filed on 11 October 2013 for sushi and prepared meals containing rice in class 30

Trademark Registration Sushi Train Atoma Logo

The opponent has , since 1994, operated franchised restaurants selling sushi food products and related merchandising under the Sushi Train trade mark. By August 2013, there were 38 such restaurants in Queensland, New South Wales and South Australia.

The applicant opened a store in Townsville, Queensland in June 2013 and operates the website at www.atomasushi.com.au . The words Sushi Train were used in a prominent manner at the entrance to the store. The applicant’s evidence also included material supporting use, by a predecessor in business, of Atoma Sushi and Atoma Sushi Train in Townsville from  late 2010 as well as use of use of the Sushi Train Atoma Logo from February 2013.

The opposition was upheld under the s44 ground with the opponent relying on earlier registrations for the Sushi Train Logo shown below and the SUSHI TRAIN word mark covering restaurant and food related services in classes 42 and 43

Trademark Registration Sushi Train Logo

The delegate found in favour of the opponent by considering only its prior SUSHI TRAIN word mark registration.

Based on the evidence and submissions, the delegate was satisfied that the applicant’s goods in class 30 were closely related to the “Provision of food and drinks; restaurant services; take-away (fast-food) services; catering services; sushi bars; snack bars; food preparation services; food cooking services” in class 43 covered by the opponent’s SUSHI TRAIN word mark registration.

The delegate then went on to consider the deceptive similarity issue and was satisfied that, given the close relationship between the applicant’s goods and the opponent’s services that the incorporation of the whole of the opponent’s word mark within each of the applied for marks is likely to cause a significant number of potential purchasers of the goods to wonder, or entertain a reasonable doubt, about whether the parties’ respective goods and services come from the same source.

The applicant sought to rely on the honest concurrent use provision, but the hearing officer was not satisfied the extent of the applicant’s use of the applied for marks in duration, area and volume was sufficient to support registration. The delegate did not make any finding as to whether the applied for marks were honestly adopted.

 

Vectura GmbH [2016] ATMO 77 (27 September 2016)

The applicant was successful in overcoming a non distinctiveness objection taken against its application for trademark registration of FOX filed on 28 November 2014 for various pharmaceuticals in class 5 and medical equipment in class 10.

The objection raised during examination was based on the word FOX being a common Australian surname occurring 7,259 times in the Search for Australian Surnames (SFAS).

The delegate agreed with the applicant that the word FOX is sufficiently inherently adapted to distinguish the relevant goods taking into account the following considerations:

  • the word ‘fox’ has an SFAS value of 7,259;
  • the word ‘fox’ has several meanings other than that of a surname;
  • the goods are relatively specialised;
  • the market for the goods is highly regulated and relatively narrow; and
  • it does not appear to be common practice in Australia for traders of these goods to use their surname as a trade mark.

Kathryn Hams v Indian Motorcycle International, LLC [2016] ATMO 78 (27 September 2016)

Partly successful opposition by Hams to an application for removal alleging non use of the registered CHIEFTAIN Logo trade mark shown below during the 3 year period ending 1 April 2014. The trademark registration covered automotive vehicles and spoilers for automotive vehicles in class 12.

Trademark Registration Chieftain Logo

The evidence disclosed the opponent is essentially a fibreglass fabricator with use of the registered mark for canopies for utility vehicles, utility vehicle canopies with spoilers and motorcycle side-cars. However, the delegate concluded these goods did not fall within the scope of the goods covered by the registration.

However, the delegate was prepared to exercise discretion and leave the mark on the Register with a limitation to “automotive land vehicles”.

In reaching this decision, the delegate was mindful that there is no evidence that the opponent has used or intended to use the registered mark on “automotive vehicles” or “spoilers for automotive vehicles” separate from spoilers which are an integral part of utility vehicle canopies.

The CHIEFTAIN trade mark has a history in the automotive market in Australia in connection with canopies for utility vehicles. An extension to the fabrication of motorcycle side-cars was delayed due to damage to the opponent’s fabrication facility in Western Sydney caused by bushfires in September/October 2013, but the evidence disclosed serious preparatory steps and an objective commitment to use the registered mark for these extended range of goods. The delegate considered that a utility vehicle canopy is similar to an automotive vehicle and a motorcycle side-car is similar to a motorcycle (being an automotive vehicle). However, a utility vehicle canopy with a spoiler is not similar to a spoiler for an automotive vehicle. These were all factors in favour of an exercise of discretion.

 

Ananda Marga Pracaraka Samgha Ltd v Seva Dharma Mission (Australia) Limited [2016] ATMO 79 (29 September 2016)

Successful opposition by Ananda Marga Pracaraka Samgha to trademark registration of the AMUS Ananda Marga Universal Stores Logo shown below filed on 23 September 2013 for a broad range of services in class 35 including retailing, wholesaling, sales promotion and online advertising, business support and some charitable services.

Trademark Registration AMUS Ananda Marga Logo

This opposition was part of a long running dispute between the parties and the delegate referred to an earlier Federal Court case reported at Ananda Marga Pracaraka Samgha Ltd v Tomar (No 6) [2013] FCA 284.

The opponent prevailed under the s60 ground based on the Australian reputation of its Ananda Marga trade marks since the foundation of the Ananda Marga philosophy in India in 1955 and use of these marks in Australia for over 20 years in connection with charitable fundraising, workshops as well as sales of books and clothing. The delegate was satisfied that a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the opponent’s Ananda Marga trade marks and the applied for mark if it were used to the extent of all of the class 35 services listed in the application.