Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – April 2020

Foxtel Management Pty Ltd v Beijing Qiyi Century Science & Technology Co Ltd [2020] ATMO 50 (1 April 2020)

Successful opposition by Foxtel to trademark registration of the IQIYI Logo mark shown below filed on 15 June 2017 for various goods and services in classes 9, 35, 38, 41 and 42.

Trademark-Registration-IQIYL-Logo

The opponent prevailed under the s60 ground by relying on the Australian reputation of its IQ family of marks used since 2005 in connection with set top boxes for accessing its pay television services.

The applicant uses the applied for mark in China in connection with its online video platform which is apparently similar in function to the opponent’s pay television services.

The delegate was satisfied the opponent’s IQ mark had acquired a significant Australian reputation for television related goods and associated services. While this mark was used in close association with FOXTEL, the delegate considered this amounted to the separate use of two distinctive marks.

The delegate commented that the applied for mark is likely to be viewed as either the letters ‘QIY’ surrounded by a box or as the letters ‘iQIY’ surrounded by a box (the ‘l’ in the frame being significantly less noticeable than the ‘i’ element), with some viewers seeing it as ‘QIY’ while others seeing it as ‘iQIY’. The delegate noted the opponent has used its marks typically with a lower case ‘i’ and upper case ‘Q’, including with some stylisation or additional devices, and with various suffixes including ‘2’, ‘3’, ‘HD’ and ‘2Go’. Given this, the delegate considered, there is a likelihood that the many consumers familiar with the opponent’s IQ mark in Australia may view the applied for mark used for essentially identical goods and services as the goods and services for which the IQ mark has a reputation and read it as ‘iQIY’ and by reason of the use of the “iQ” element be caused to wonder if the applied for mark denotes goods and services offered by the Opponent.

 

Southcorp Brands Pty Ltd v BIN-VIN (Shanghai) Trading Co Ltd [2020] ATMO 51 (1 April 2020)

Successful opposition by Southcorp to trademark registration of RICH BOSS filed on 27 June 2017 for various alcoholic beverages in class 33.

The opponent prevailed under the s62A bad faith ground.

The applicant did not file any evidence or take part in the hearing. It is part of a group of companies engaged in behavior in China and Australia involving the misappropriation of the opponent’s marks, particularly connected with its well known Penfolds brand.

The Chinese character version of the Penfolds Mark may (albeit incorrectly) be translated into English as ‘Rush Rich’.

The delegate found the applied for mark is part of a continued attempt to register a mark that contains associations with the Opponent’s Penfolds brand and related Chinese translations and transliterations.

 

Cantine Ceci S.p.A. v Tasmanian Vintners Pty Ltd [2020] ATMO 52 (9 April 2020)

Unsuccessful opposition by Cantine Ceci to trademark registration of TERRE VERDE filed on 19 May 2017 for wine and cider in class 33.

The opponent relied on s44 and specifically its prior trademark registration for TERRE VERDIANE & Device shown below which also covered wine in class 33.

Trademark-Registration-Terre-Verdiane-Logo

The delegate noted the common occurrence in the market of ‘terre’ or ‘terra’ for wine and the visual prominence of the device element in the opponent’s registered mark, and concluded the applied for mark was not substantially identical with or deceptively similar to this registered mark.

 

Dimension Data (Proprietary) Ltd v Dimension Digital Pty Ltd [2020] ATMO 53 (14 April 2020)

Successful oppositions by Dimension Data to trademark registration of word and logo versions of DIMENSION DIGITAL filed on 14 February 2018 for advertising services provided over the internet in class 35.

The opponent prevailed under the s44 ground and specifically its prior trademark registrations for word and logo versions of its DIMENSION DATA mark for various computer and communications related goods and services in classes 9, 37, 38 and 42. The word mark registration covered marketing services connected to retail, wholesale and supply of various computer related goods in class 42 (nowadays marketing services are in class 35).

The delegate referred to the definition of marketing in the Macquarie Dictionary and formed the view that the opponent’s marketing services in class 42 encompassed advertising services. Further, the applied for marks were deceptively similar to the opponent’s DIMENSION DATA word mark registration.

The applicant attempted to rely on honest concurrent use to traverse the s44 issue, but its evidence was silent as to whether it was aware of the opponent’s DIMENSION DATA mark at the time of adopting its DIMENSION DIGITAL mark in 2015. Consequently, the delegate was not satisfied as to the ‘honesty’ requirement.

 

Lidl Stiftung & Co. KG v Conga Foods Pty Ltd [2020] ATMO 54 (15 April 2020)

Unsuccessful opposition by Lidl to an application for removal of its trademark registration for Sol & Mar Logo shown below alleging non-use during the 3 years period ending on 14 November 2018.

Trademark-Registration-Sol-Mar-Logo

The trademark registration dated from 8 November 2013 and covered various goods in classes 29, 30, 31, 32 and 33.

Lidl asserted an intention to use this mark, but alleged there were circumstances that were an obstacle to use, namely the high barriers to entry attributable to the dominance of Woolworths and Coles in the Australian market and a challenging regulatory landscape in Australia. However, the Statement of Grounds and Particulars did not mention relying on obstacle to use and so the opponent could not rely on this. Even if were able to do so, the delegate was not satisfied the evidence demonstrated any such circumstances.

Although the opponent had used this mark overseas, that was insufficient for the delegate to exercise discretion in favour of the opponent and so a direction was given to remove the mark from the Register in its entirety.

 

Barrand Investment Pty Ltd v High Spirits Wholesale Pty Ltd as trustee for KSB Family Trust [2020] ATMO 55 (15 April 2020)

Unsuccessful opposition by Barrand to trademark registration of VODKA STINGER Logo shown below filed on 16 May 2017 for alcoholic beverages in class 33.

Trademark-Registration-Vodka-Stinger-Logo

The opponent relied on grounds of opposition under ss 58 (ownership) and 62A (bad faith) but failed to establish either ground.

The evidence pointed to some discussions between the parties concerning ‘Stinger’ or ‘Vodka Stinger’, but there could have been independent creation. Neither party relied on any actual commercial use. The preparatory steps taken by the opponent did not involve a sign which could be characterised as being substantially identical with the applied for mark.

 

Transwood Pty Ltd v Independent Cooperage Australia Pty Ltd [2020] ATMO 56 (16 April 2020)

Successful opposition by Transwood to trademark registration of Schmeider filed on 8 March 2017 for various barrels, baskets and caskets in class 20.

The opponent prevailed under the s62A bad faith ground.

The opponent operated a family owned cooperage business in Bundaberg, Queensland under the SCHMEIDER and SCHMEIDER’S COOPERAGE trade marks and names (with SCHMEIDER also being the surname of the individuals behind this business) from 1982.

There were past dealings between the parties which the delegate characterised as giving rise to a lessor/lessee relationship which ended in disputes. The rights to the SCHMEIDER and/or SCHMEIDER’S COOPERAGE trade marks were not covered by any of the Agreements. Rather, the applicant and its predecessor merely operated a business under the name Bundy Kegs which took over the running of the retail/tourism part of the opponent’s business operating from the business premises known as the Schmeider Cooperage Complex.

The delegate found that seeking registration of the applied for mark was more than just savvy business practice and would fall squarely with the category of unconscious, unscrupulous or underhanded conduct and was in bad faith.

 

Uber Builders & Developers P/L and Uber Constructions Australia Ltd v Uber Constructions P/L [2020] ATMO 57 (16 April 2020)

Unsuccessful opposition by Uber Builders to trademark registration of UBER filed on 29 June 2016 for various building and construction services in class 37.

The opponent relied on grounds of opposition under ss 50 and 60, but failed to establish either ground.

Under the s58 ownership ground, the opponent relied on use of a composite mark containing UBER since September 2015. Although this was prior to the filing date of the applied for UBER mark, the applicant’s evidence showed its use of the UBER mark from around 2008 and so this ground of opposition failed.

The s60 ground also failed because the delegate was not satisfied the opponent’s mark had acquired a sufficient Australian reputation.

 

Glenvill Development Pty Ltd v Airbus Helicopters [2020] ATMO 58 (16 April 2020)

Partly successful opposition by Glenvill to an application for removal of its trademark registration for ACH Logo shown below alleging non-use during the 3 years period ending on 10 December 2018.

Trademark-Registration-ACH-Logo

The trademark registration dated from 26 November 1999 and covered building related goods in classes 19 and 37.

The delegate directed the trade mark be removed from the Register except for “Building construction; building construction supervision; providing advice on the planning and construction of home dwellings” in class 37.

Although there was no evidence of use of the registered mark during the relevant three years period, Glenvill had used this mark from some time before 2014 for building construction services in regional Victoria and had not abandoned this mark. The delegate exercised discretion in favour of leaving this mark on the Register for a restricted class 37 specification.

 

Southcorp Brands Pty Limited v EASTERN TOMORROW (JINJIANG) IMPORT & EXPORT CO LTD [2020] ATMO 59 (21 April 2020)

Successful opposition by Southcorp to trademark registration of the R&R ESTATE Logo mark shown below filed on 12 July 2017 for various alcoholic beverages in class 33.

Trademark Registration R-R-Estate-Logo

The opponent prevailed under the s62A bad faith ground.

The opponent was successful in an earlier opposition to registration of the applicant’s RUSH RICH mark which was a translation of the opponent’s PENFOLDS mark in Mandarin characters and included the same design element as shown below. This was reported here .

Trademark Registration Rush Rich Logo 1

The delegate considered that the reputation of this RUSH RICH mark would survive and lead to confusion. The applicant did not file any evidence and the delegate was satisfied its conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

 

Fenestration Solutions Australia Pty Ltd v Combined Group of Companies Pty Ltd [2020] ATMO 61 (22 April 2020)

Unsuccessful oppositions by Fenestration Solutions to trademark registration of three applications for marks containing or consisting of the term EVO filed on 24 August 2016 for wholesaling of building products, hardware, tradesman’s tools and other innovative products in class 35. The applications were accepted with endorsements indicating the honest concurrent use and prior continuous provisions were applied.

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

The opponent has, since February 2015, designed and supplied door and window systems and owns prior trademark registrations for EVO including in class 35 for retailing and wholesaling of windows, doors and related hardware and accessories which dated from December 2014.

The applicant imports and distributes products to the building and lifestyle industries with retail customers including Bunnings, Trade Link and Reece. It relied on use of its EVO Marks from July 2010.

The delegate considered the opponent’s prior trademark registration for EVO in class 35 gave rise to a valid objection under s44, but the applicant could rely on the prior continuous use of its EVO Marks to overcome this.

The s58 ownership ground also failed because the opponent could not show use of its EVO mark before the applicant’s first use in 2010.

The s60 ground failed because the delegate was not satisfied the opponent’s evidence established the requisite reputation in its EVO mark prior to the filing date of the applied for EVO Marks. Significantly, the opponent did not provide sales revenues or marketing figures.

The opponent also relied on its reputation in the EVO mark under s42(b) to allege that use of the applied for EVO Marks would be misleading or deceptive and contrary to the Australian Consumer Law or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

 

Google LLC [2020] ATMO 62 (22 April 2020)

Google was able to overcome an objection to trademark registration of ACTIVE EDGE filed on 15 November 2017 for various pressure and motion sensors for mobile devices in class 9.

During examination there was a distinctiveness objection based on the words “active edge” referring to ‘sensors and pressure measuring technology enable an active edge, meaning the edge of a mobile device is active or able to be used for performing tasks or sending commands.’

The delegate considered the ordinary meaning of these words and concluded there were at least six quite distinct and plausible meaning that the phrase “active edge” might have in relation to the applicant’s goods, and the examiner had instituted a search for a meaning. The delegate referred to Australian Postal Corp v Sendle Pty Ltd [2017] 128 IPR 130 and noted “ A critical distinction must be drawn between the [Goods] themselves and the perceived attributes of those [Goods] as they may be insinuated by the Trade Mark. The latter does not provide the correct viewpoint from which to gauge ordinary signification since it is already one step removed from the [Goods] themselves”.

In considering the likelihood of other traders legitimately desiring to use the words “active edge”, the delegate noted these words were at most allusive to some potential feature of the goods. Further, there were other terms available to others to describe the ability to squeeze a mobile device to give it a command.

 

MySchool Pty Ltd v Rossi Brothers Pty Ltd [2020] ATMO 63 (23 April 2020)

Partly successful opposition by MySchool to an application for removal of its trademark registration for MYSCHOOL alleging non-use during the 3 years period ending on 15 October 2017.

The trademark registration dated from 14 July 2010 and covered various services in classes 36, 38 and 42.

The delegate directed the MYSCHOOL mark remain on the Register for a restricted specification. Basically, the broad claims to fund raising and financial services in class 36 as well as communications and electronic mail service in class 38 could not be maintained. The delegate declined to exercise discretion in favour of leaving the mark on the Register for services other than those for which use was established.

 

Cheeky Bits Pty Ltd v Cheeky Bits for Women Pty Ltd [2020] ATMO 64 (24 April 2020)

Unsuccessful opposition by Cheeky Bits Pty Ltd to an application for removal of its trademark registrations for CHEEKY BITZ (word and logo versions) alleging non-use during the 3 years period ending on 26 August 2017.

The word mark registration dated from 21 August 2006 and the logo mark registration dated from 15 February 2010. Both registrations covered various apparel in class 25.

The opponent contended that expenses had been incurred to design and create products and a website, but the manufacturer closed its operations and a director of the opponent suffered a medical condition which prevented brand and product development.

The delegate considered the evidence of preparations to commence use of the registered marks was insufficient to constitute good faith use during the relevant period.

Further, ill health was not a sufficient obstacle to use of the registered marks and the delegate referred to Woolly Bull Enterprises Pty Ltd v Reynolds [2001]FCA 261.

There was no reason to exercise discretion and the delegate directed both trade marks to be removed from the Register in their entirety.

 

Surf Life Saving Queensland Inc (SLSQ) v Peregian Beach Surf Club Incorporated [2020] ATMO 65 (28 April 2020)

Successful opposition by SLSQ to trademark registration of PEREGIAN BEACH SLSC Logo shown below filed on 14 February 2018 for sports club services in class 41.

Trademark-Registration-Peregian-Beach-Logo

The opponent prevailed under the s43 ground.

The opponent is the governing body for surf life saving in Queensland. The Peregian Beach Surf Life Saving Club was affiliated with the opponent between 1962 – 1974. That club was re-established in 1985 but closed in 2014 and transferred its assets and membership to the Noosa Heads Surf Life Saving Club which was also affiliated with the opponent.

The applicant association was formed in 2018 and sought to provide surf club services delivered by a local organisation to Peregian Beach.

The delegate agreed with the opponent that the letters “S.L.S.C.” in the applied for mark connote that the applicant is a surf life saving club somehow affiliated with or approved by the opponent which gives rise to a likelihood of deception or confusion.

 

Jonathan Hii v Shiming Li [2020] ATMO 66 (28 April 2020)

Unsuccessful opposition by Hii to trademark registration of JTL Aoan Logo shown below filed on 6 November 2017 for various foodstuffs and beverages in classes 29, 30 and 32.

Trademark-Registration-JTL-Aoan-Logo

The opponent relied on grounds under ss 44, 58A and 60, but failed to establish any ground.

Under s44 the opponent relied on a prior registration in class 35 for the mark shown below which was owned by Aoan International Pty Ltd.

Trademark-Registration-A-Swoosh-Logo

However, the delegate did not consider the applied for mark to be deceptively similar to this registered mark.

The s58A ground of opposition was not available given that the applied for mark was not accepted under s44(4) prior continuous use.

Under s60 the opponent asserted that Aoan International Pty Ltd was a company active in the Chinese Australian mark which exported various Australian products. However, the evidence was insufficient to show that a trade mark containing Aoan had the requisite Australian reputation as at the filing date.

 

Dazzle and Shine Pty Ltd as trustee for Agnes and Charlene Trust [2020] ATMO 67 (29 April 2020)

The applicant was unable to overcome an objection to trademark registration of CAMP JABIRU filed on 8 November 2018 for various holiday camp and health retreat services in classes 41, 43 and 44.

During examination an objection was raised based on the geographical significance of JABIRU, being a town in the Kakadu National Park in the Northern Territory.

The applicant filed evidence and argued the ordinary meaning of the word JABIRU is an Australian subspecies of the black-necked stork.

The delegate considered the “inclusion of CAMP in CAMP JABIRU, serves to emphasise the geographical significance of the JABIRU element. As a whole, the Trade Mark is likely to have the ordinary signification of a camping ground located in Jabiru.” The delegate was “satisfied that to a sufficient number persons in Australia who will purchase, consume or trade in the Applicant’s Services, the ordinary signification of the Trade Mark is a camping ground located in the vicinity of Jabiru in the Northern Territory.” Further, other traders, particularly those based in Jabiru who might wish to provide similar services, have a legitimate to need for these words to be available.

The delegate found CAMP JABIRU is not to any extent inherently adapted to distinguish the applicant’s services from those similar services of other traders. The supporting evidence of use was insufficient to establish acquired distinctiveness.

 

Baruch Enterprises Limited v Smart Storage Pty Ltd [2020] ATMO 68 (29 April 2020)

Partly successful opposition by Baruch to an application for removal of its trademark registration for ULTRA MAX alleging non-use during the 3 years period ending on 2 January 2018.

The trademark registration dated from 27 November 2012 and covered various batteries, compact discs, videos and cameras in class 9.

The delegate was satisfied the opponent has shown use of the registered mark for batteries and flashlights (torches) and it was also appropriate to exercise discretion to leave the ULTRA MAX mark on the Register for those goods as well as  battery chargers and battery holders.

 

Univar Inc v Urban Republic Pty Ltd [2020] ATMO 69 (29 April 2020)

Successful opposition by Univar to trademark registration of the Device mark shown below filed on 9 August 2017 for retail, wholesale and distribution of goods in class 35.

Trademark-Registration-Hexagon-Logo-Urban-Republic

The opponent prevailed under the s44 ground by relying on its prior registration for the nearly identical device mar shown below which covered distributorship services in class 39.

Trademark-Registration-Hexagon-Logo-Univar

The delegate considered the applied for mark was substantially identical with the opponent’s prior registered mark.

Further, the delegate considered the applicant’s claims to distribution, wholesale and retail of goods in class 35 were similar to the distributorship services in class 39 covered by the opponent’s registered mark; although there was no discussion as to why wholesale and retail services were similar to distributor services in class 39.

 

Aktiebolaget SKF v Yan Jing Xiang [2020] ATMO 70 (30 April 2020)

Unsuccessful opposition by SKF to trademark registration of SKL (Stylised) filed on 3 May 2017 for various bearings in class 7.

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

Under s44, the opponent relied on its prior registrations for trade marks containing the letters SKF. These letters were either stylised, separated by punctuation marks, contained in an image or with an additional word. The delegate concluded the applied for mark was not substantially identical with or deceptively similar to any of them. Further, the relevant goods were relatively specialist items marketed to knowledgeable persons which diminished the risk of confusion.

Under s60, the opponent relied on Australian use of its SKF mark in Australia since 1920 and the delegate was satisfied the evidence showed a substantial reputation in connection with the relevant goods. However, the strength of this reputation worked against the opponent and the delegate was not satisfied there would be a likelihood of confusion amongst persons in the target market for such specialist products. Reference was made to the Maltesers case – Delfi Chocolate SA v Mars Australia Pty Ltd [2015] FCA 1065.

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

 

Concierge App Pty Ltd v Luxit Pty Limited [2020] ATMO 71 (30 April 2020)

Unsuccessful opposition by Concierge App to trademark registration of LUX IT YOUR BEAUTY CONCIERGE (Stylised) as shown below filed on 12 April 2017 for various goods and services in classes 9, 38, 41, 42, 44 and 45.

Trademark-Registration-Lux-it-Your-Beauty-Concierge

The opponent relied on grounds of opposition under ss 42(b), 44, 58, 58A, 59, 60 and 62A but failed to establish any ground.

The opponent is in the beauty therapy business. The applicant provides beauty therapy services via a mobile application and owns various trademark registrations for “lux it” or “luxit”.

Under s44 the opponent relied on its various prior trademark registrations for or containing CONCIERGE. However, the delegate considered the applied for mark was not substantially identical with or deceptively similar to any of the opponent’s registered CONCIERGE Marks. The applicant’s evidence reinforced that the meaning of the word ‘concierge’ extends beyond the traditional notion of a hotel employee and is now conceptualised more broadly and deployed to indicate personal services which provide recommendations, information and/or coordination services on a particular subject matter.

The s58 ownership ground also failed given the delegate’s finding that none of the opponent’s CONCIERGE Marks were substantially identical with the applied for mark.

The s58A ground of opposition was not available given that the applied for mark was not accepted under s44(4) prior continuous use.

Under the s59 ground, the opponent alleged the applicant lacked an intention to use the applied for mark for all the claimed goods and services, but the evidence relied upon by the opponent (an internet search) was insufficient to establish a prima facie case of lack of intention, so it was unnecessary for the applicant to rebut this.

Under s60, the opponent relied on use of its various CONCIERGE Marks for beauty therapy related services from October 2016 which was 17 months before the filing date of the applied for mark. The evidence did not distinguish between use of the individual marks relied upon. The delegate was not satisfied the evidence disclosed the acquisition of a sufficient reputation and it was unnecessary to even consider the likelihood of confusion aspect of this ground of opposition.

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

Under the s62A bad faith ground, the opponent asserted that the applicant filed the trade mark application after being put on notice of the opponent’s CONCIERGE Marks, but there was no cogent evidence that the applicant’s conduct was unscrupulous, underhand or unconscientious.