Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – April 2019

Fratelli Fantini SpA v Beverley Harris [2019] ATMO 44 (2 April 2019)

Unsuccessful opposition by Fratelli Fantini to trademark registration of Santini filed on 5 July 2016 for various bathroom products in class 11

The opponent primarily relied on grounds of opposition under ss s42(b), 43, 44, 58, 60 and 62A, but failed to satisfy the delegate on any ground.

The opponent primarily relied on its prior trademark registrations for FANTINI and Australian use of the FANTINI mark since 1995 for various taps, shower fittings and other similar goods.

The s44 ground failed because the delegate did not consider the applied for Santini mark to be deceptively similar to FANTINI; although the issue was finely balanced and the presumption of registrability favoured the applicant.

The s55 ground failed. Although the opponent had prior use of FANTINI for the same kind of goods, the delegate did not consider the applied for Santini mark to be substantially identical with FANTINI.

Under the s60 ground, the delegate assessed the opponent’s Australian reputation in its FANTINI mark to be slight and did not consider there to be a likelihood of confusion having regard to the market for these types of goods.

The opponent also relied on its reputation in the FANTINI mark under s42(b) to allege that use of the applied for Santini mark would be contrary to the Australian Consumer Law. However, given the delegate’s finding under s60, the s42(b) ground also failed.

The s43 ground failed because the opponent was relying on a comparison of the respective marks and there was no evidence of any connotation in the applied for Santini mark giving rise to a likelihood of confusion.

No evidence was filed to support the s62A bad faith ground, so it also failed.

 

Blinc Inc v SKNCompany Pty Ltd [2019] ATMO 45 (2 April 2019)

Successful opposition by Blinc to an application under s92 for removal of its registered BLINK trade mark alleging non-use during the 3 year period ending on 27 October 2017 for any of the registered class 3 goods other than eye make-up, eye brow pencils, eye crayons and mascara.

There was use by the opponent of its BLINC mark for various cosmetic goods for eye make-up, eye brow pencils, eye crayons and mascara. The delegate accepted that this use of BLINC could be relied upon to establish use of the registered BLINK mark for these goods, but there was still no use for any of the goods subject of the removal application.

There was no obstacle to use. However, the delegate exercised discretion in favour of leaving the mark on the Register, particularly due to the opponent’s reputation derived from use of the BLINC mark for eye make-up and the similarity with the goods subject of the removal application.

 

Nova Entertainment Pty Ltd v Huawei Technologies Co Ltd [2019] ATMO 46 (2 April 2019)

Successful opposition by Nova Entertainment to trademark registration of NOVA filed on 22 July 2016 for various technology products in class 9.

The Registrar had issued, at the request of the opponent, a Notice to Produce directing the applicant to produce any documents that indicate the applicant’s plans to use the trade mark NOVA in Australia in respect of goods covered by the trade mark application other than smartphones. The applicant did not produce any such documents and also indicated it was unable to file a declaration as to circumstances regarding its intention to use the applied for mark in Australia.

The opponent prevailed under the s59 ground with the delegate being satisfied the applicant did not have an intention to use the applied for mark for any goods covered by the Notice to Produce.

The delegate also considered the applicant’s intention to use the NOVA mark for smartphones and was satisfied it had such an intention. The applicant had been using HUAWEI NOVA for smartphones and the delegate considered this amounted to use of two separate marks, being the house mark HUAWEI and the brand mark NOVA.

The delegate considered it was not appropriate for the applicant to amend to just “smart phones” ( largely due to its specification of goods as filed containing a limitation which embraced all the applied for goods) and refused the application in its entirety.

 

Michael Jackson v Redgrass Communications Pty Ltd [2019] ATMO 47 (3 April 2019)

Unsuccessful opposition by Jackson to trademark registration of CONVERGENCE filed on 24 May 2016 for various business and education related services in classes 35 and 41.

The opponent relied on the s58 ownership and s60 reputation grounds, but did not file any evidence to support either ground and hence the opposition was dismissed.

 

Seal Hard Australia PL v Laticrete International Inc [2019] ATMO 48 (4 April 2019)

Successful opposition by Seal Hard to an application under s92 for removal of its registered SEAL HARD Logo trade mark alleging non-use during the 3 year period ending on 23 May 2017 for any of the registered class 3 goods, namely floor polishes, floor treatment chemicals and floor treatment compositions.

The removal applicant asserted that, since 2008, the opponent was merely the Australian distributor of SEAL HARD products for L& M Construction Chemicals Inc which, on 4 March 2014, assigned its rights in the SEAL HARD mark to the applicant.

Nonetheless, the delegate was satisfied the evidence relied upon by the opponent established relevant use of the registered SEAL HARD Logo mark by the opponent during the relevant 3 year period and it had rebutted the allegation of non-use.

 

La Z Boy Incorporated v Lazy Holdings Pty Ltd [2019] ATMO 49 (5 April 2019)

Successful opposition by La-Z-Boy to trademark registration of LAZYBED filed on 5 July 2016 for foam mattresses in class 20.

The opponent prevailed under the s60 ground of opposition. The delegate was satisfied that, having regard to the Australian reputation of the LA-Z-BOY trade mark which had been used in Australia since 1958 in relation to a range of lounges, reclining armchairs and sofa beds, that use of the applied for LAZYBED trade mark would be likely to cause confusion.

 

eBay Inc v Mediabay Marketplace Pte Ltd [2019] ATMO 50 (5 April 2019)

Successful opposition by eBay to trademark registration of the Media Bay Logo mark shown below filed on 17 February 2017 for various online marketplace related goods and services in classes 35 and 42.

Trademark-Registration-Mediabay-Logo

The opponent prevailed under the s60 ground of opposition. The delegate was satisfied that, having regard to the Australian reputation of the eBay trade mark, use of the applied for Media Bay Logo trade mark would be likely to cause confusion.

 

Julie Anne Martin v The Tasmanian Walking Company [2019] ATMO 52 (5 April 2019)

Partly successful opposition by Martin to an application under s92 for removal of her registered Three Capes trade mark for any of the registered goods in classes 5, 29, 30, 32 and 33 and services in classes 35, 39, 41 and 43.

The removal applicant challenged the opponent’s intention to use the registered mark for all the claimed goods and services at the time of filing the application for trademark registration on 25 September 2014. The delegate was not satisfied the evidence demonstrated a real and definite intention to use the Three Capes trade mark for most of the claimed goods and services.

The opponent relied on her use of Three Capes Eco Lodge for accommodation related services, but the delegate did not regard use of that combination word mark to be use of the Three Capes trade mark.

The delegate was not prepared to exercise discretion and leave the Three Capes mark on the Register for goods other than those for which use was proven.

Consequently, the Three Capes trade mark registration was limited to certain goods and services in classes 29, 30, 32, 35 and 43.

 

Southcorp Brands Pty Ltd v Luzhou Lao Jiao Co Ltd [2019] ATMO 51 (8 April 2019)

Successful opposition by Southcorp to trademark registration of TREASURE WINGS filed on 14 November 2016 for wine in class 33.

The opponent prevailed under the s42(b) contrary to law ground.

The opponent has, since 2005, been a wholly owned subsidiary of Treasury Wine Estates Limited. The TREASURY WINES ESTATES trade mark is used in relation to the whole of the Treasury Wines business and TREASURY WINES is also used to refer to the corporate identity, Treasury Wines Estates Limited.

The delegate was satisfied that use of the applied for TREASURY WINGS trade mark would be contrary to the Australian Consumer Law in that it would give rise to misleading or deceptive conduct.

The delegate accepted the opponent’s submission that the unwieldiness of the expression ‘Treasure Wings’ and its close resemblance to TREASURY WINES leads to a conclusion, on the balance of probabilities, that the applied for mark was coined with a close iteration of the TREASURY WINES name and trade mark in mind. The applicant did not file evidence that counters this and the delegate drew an adverse inference from that.

 

MynSmart Pty Ltd v Zora Tech Pty Ltd [2019] ATMO 53 (8 April 2019)

Partly successful opposition by MynSmart to an application under s92 for removal of its registered Myn Logo trade mark alleging non-use during the 3 year period ending on 12 July 2016 for any of the registered services in classes 35, 41 and 42 which primarily related to the operation of mines.

The registered mark is shown below:

Trademark-Registration-Myn-Logo

The delegate accepted use of the mark shown below constituted use of the registered form of the mark.

Trademark-Registration-Myn-Smart-Logo

The inclusion of the small-print word “Smart” was an addition or alteration which did not substantially affect the identity of the registered mark.

However, the evidence disclosed the opponent provides training services to mining companies in the safe operation of equipment, in particular to dragline operators and the delegate restricted the registration accordingly.

 

Huawei Technologies Co Ltd v Ubisoft Entertainment, Societe Anonyme [2019] ATMO 54 (8 April 2019)

Partly successful opposition by Huawei to trademark registration of FOR HONOR (Stylised) filed on 25 November 2015 for a broad range of goods and services in classes 9, 28 and 41.

The opponent relied on its prior registrations for Honor (Stylised) and use of the HONOUR mark for smart and mobile phones.

The opponent prevailed under s44 by relying on its prior registrations for HONOR (Stylised) covering specific goods and services in classes 9 and 35. The delegate considered the applied for mark was deceptively similar to these registered marks and found some of the applied for goods in class 9 were similar to those covered by the opponent’s class 9 registration. Consequently, the class 9 specification was restricted to exclude the similar goods. It appears the parties did not make submissions on the similar goods/services issue, so the delegate formed a view on this without the benefit of evidence or submissions.

The opponent also relied on grounds of opposition under ss s42(b), 58, 59 and 60, but failed to satisfy the delegate on any of those grounds.

 

50-50 Foundation Pty Ltd v Win 50-50 Pty Ltd [2019] ATMO 56 (9 April 2019)

Successful opposition by 50-50 Foundation to trademark registration of the Win 50-50 Logo mark shown below filed on 5 August 2016 for lottery services in class 41

Trademark-Registration-Win-50-50-Logo

The opponent prevailed under the s62A bad faith ground.

The opponent is a not for profit company which since 2013 has been using various versions of its 50 – 50 mark for charity raffles and lotteries as part of fund raising events, particularly at sporting events in Queensland.

The applicant runs a lottery at sporting events in South Australia.

The opponent alleged the applicant’s website included material copied or substantially reproduced from the opponent’s website without authorisation.

The delegate agreed with the opponent that the applicant’s conduct was in bad faith. The delegate commented that the applicant’s rehearsal on its website of material from the opponent’s website indicates a conscious decision to iterate that material and there is an inference that the applicant also both emulated one or more of the opponent’s trade marks and pitched the identical services at the same market.

 

SCAIP Srl v Worldwide Machinery Ltd [2019] ATMO 57 (10 April 2019)

Unsuccessful opposition by SCAIP to trademark registration of the composite word and device marks shown below filed on 20 November 2013 for various pipeline related goods and services in classes 7, 12 and 37.

Trademark-Registration-Superior-Manufacturing-Logo-1

Trademark-Registration-Superior-Manufacturing-Logo-2

The opponent relied on grounds of opposition under ss 42(b), 44. 58, 60 and 62A but failed to establish any ground.

The parties were involved in an earlier 2016 opposition involving the second composite mark where Worldwide Machinery failed in its opposition to registration of that mark by SCAIP for various vehicles in class 12.

The opponent’s position was that the applicant was its exclusive Australian distributor. However, the applicant contended that the opponent manufactured the relevant goods to which the trade marks were applied in accordance with specifications provided by the applicant.

The s58 ownership ground failed because the opponent was unable to show Australian use before the first use by the applicant in 2007.

Under s44, the opponent relied on its prior registration for the second composite mark in class 12, but the applicant was able to overcome this by relying on prior continuous use under s44(4).

The s60 ground failed because the opponent’s evidence was insufficient to establish a relevant Australian reputation.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for marks would be contrary to the Australian Consumer Law. However, given the delegate’s finding under s60, the s42(b) ground also failed. Under this ground, the opponent also relied on copyright, but the evidence established the relevant composite marks were authored by an employee of the applicant in 2002.

The s62A bad faith ground also failed for lack of cogent evidence.

 

The Echo Label Limited v Amazon Technologies Inc [2019] ATMO 58 (17 April 2019)

Partly successful opposition by The Echo Label to an application under s92 for removal of its registered ECHO trade mark alleging non-use during the 3 year period ending on 15 July 2017 for any of the registered goods in class 9, namely records, tapes, discs, CD’s; audio visual recording and reproducing apparatus and instruments.

The opponent relied on evidence to show the ECHO mark had been used for sound recordings, particularly in CD format, but the delegate considered this evidence was insufficient to rebut the allegation of non-use.

However, the delegate was satisfied that it was reasonable to not remove the ECHO registered mark in its entirety and exercised discretion in favour of the opponent. It was allowed to remain on the Register for CDS, records, tapes and discs.

 

J Safra IP Holdings SCS v SAFRAN [2019] ATMO 59 (17 April 2019)

Unsuccessful opposition by Safra to trademark registration of Safran Electronics & Defense filed on 12 August 2016 for various goods and services in classes 9, 12, 35, 37, 38 and 42.

The opponent relied on its prior registrations for the trade mark J.SAFRA which covered goods in class 14 and services in class 36, as well as business management services in class 35.

Essentially, the matter turned on whether or not the applicant’s relevant class 35 services, namely “compilation of information into computer databases; management and compilation of databases; collection and systematization of data “ were similar to the opponent’s registered  “business management services” and the delegate considered they were not similar services.

 

Wow Travel Pty Ltd v Wow Tours Pty Ltd [2019] ATMO 60 (17 April 2019)

Successful opposition by Wow Travel to trademark registration of the composite mark shown below filed on 22 November 2016 for various tour guide services for persons with disabilities in class 39.

Trademark-Registration-Wow-Tours-Logo

The applicant initially overcame an examination objection based on the opponent’s prior registration for the word mark WOW dating from 1 November 2013 and covering various travel agency and tour services in class 39 by relying on s44(4) prior continuous use of the applied for mark since 2011.

However, the opponent succeeded under the s58A ground of opposition by showing earlier use of  various versions of its WOW mark since 2003 in connection with its travel agency business.

 

Cork and Chroma Pty Ltd v Cocktails & Canvas Asset Corp Pty Ltd [2019] ATMO 61 (17 April 2019)

Successful opposition by Cork and Chroma to trademark registration of Cork and Canvas filed on 2 December 2016 for various entertainment related services in class 41.

The opponent relied on use of its unregistered CORK & CHROMA and CORK AND CHROMA trade marks since August 2013 for so called ‘paint and sip’ services where customers pay a fee in order to paint under the guidance of an artist while drinking predominantly alcoholic beverages. The applicant used the applied for mark for the same kind of services.

The opponent prevailed under the s60 ground. The delegate was satisfied the opponent’s trade marks had acquired a significant reputation in the niche market for ‘paint and sip’ services and 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 trade marks and the applied for Cork and Canvas mark if it were used to the extent of all the applied for services.

 

China Xiamen RGB Link Science & Technology Co v RGBLINK LOGO & RGB LINK [2019] ATMO 62 (18 April 2019)

Successful opposition by China Xiamen RGB Link to registration of stylised and plain word versions of the trade mark RGB LINK filed on 20 September 2016 and 29 December 2016 for various goods in class 9.

The opponent prevailed under the s58 ownership ground. The delegate was satisfied its evidence established use of the same stylised mark for the same goods in Australia from 2011 which was well before the filing dates of the applied for marks and the applicant’s first use in 2017.

 

Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63 (23 April 2019)

Unsuccessful opposition by Riding for the Disabled Association to trademark registration of the PONY CLUB AUSTRALIA Logo mark shown below filed on 2 July 2015 for various education, event management, horse riding schools and horse training services in class 41

Trademark-Registration-Pony-Club-Australia-Logo

The opponent relied on grounds of opposition under ss 42(b), 44, 58 and 60 but failed to establish any of these grounds.

 

Mascot Valves Pvt Ltd v Mascot IP Holdings Pty Ltd [2019] ATMO 64 (24 April 2019)

Unsuccessful opposition by Mascot Valves to trade mark registration of the composite mark shown below filed on 7 June 2016 for valves and cocks made from metal in class 6.

Trademark-Registration-Mascot-Logo

The opponent relied on grounds of opposition under ss 42(b), 60 and 62A but failed to establish any of these grounds.

The opponent relied on Australian use of the trade mark shown below since 2003 for various control valves and related products through its distributor Mascot Industrial Pty Ltd which is a related entity to the applicant.

Trademark-Registration-Mascot-Valves-Logo

However, the applicant disputed being a reseller of the opponent’s goods and contended the opponent merely supplies parts for the applicant’s goods which are assembled by the applicant and sold under the applied for mark and other MASCOT marks. Indeed, the applicant has an earlier trademark registration for MASCOT dating from 7 March 2006 for the same class 6 goods.

The delegate favoured the applicant’s contention and considered the evidence established, on the balance of probabilities, that the applicant was the author of the applied for mark in 2006 and that it was the first user of this mark in Australia in respect of the relevant goods. This finding essentially defeated all of the opponent’s grounds of opposition.

 

ICC Business Corporation FZ LLC v Nidham Moustafa Ali Al Barazanchi [2019] ATMO 65 (30 April 2019)

Successful opposition by ICC to trademark registration of CRICKET Logo shown below filed on 11 August 2015 for various apparel in class 25.

Trademark-Registration-Cricket-Logo

The opponent prevailed under the s43 ground of opposition, namely that because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to the relevant goods or services would be likely to deceive or cause confusion. The delegate was satisfied that the connotation that the applicant is somehow endorsed by, or approved by a cricket governing body is likely to deceive or cause confusion.