Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – April 2021

Bianca-Moden GmbH & Co. KG v Bianca and Bridgett Pty Ltd [2021] ATMO 30 (15 April 2021)

Unsuccessful opposition by Bianca-Moden to trademark registration of BIANCA AND BRIDGETT filed on 5 September 2018 for various apparel in class 25.

The opponent relied solely on the s44 ground of opposition but failed to establish that ground.

Under s44, the opponent relied on its prior registrations for ‘bianca’ covering similar class 25 goods, but did not file any evidence.

The applicant filed evidence pointing to various fashion brands containing BIANCA which were in use and/or registered as trade marks.

The delegate agreed with the applicant that the applied for BIANCA AND BRIDGETT mark was not substantially identical with or deceptively similar to the opponent’s prior ‘bianca’ registered marks. LLC [2021] ATMO 31 (23 April 2021)

The applicant was able to overcome an examination objection to trademark registration of BARTON filed on 31 December 2018 for watches and accessories, jewellery and other personal decorative articles in class 14.

The Examiner raised an objection based on the geographical and surname significance of the word BARTON. The objection was raised under s41(3) indicating that BARTON was not to any extent inherently adapted to distinguish the relevant goods.

The applicant relied on evidence of Australian use of the BARTON mark for watch bands and watch straps since January 2016, It also submitted evidence, including  from the 2016 census, as to the make up of the suburb of Barton in the ACT.

The delegate considered the ordinary signification of the word BARTON is a surname, particularly as it occurred over 5000 times on the electoral roll, and considered it had some degree of inherent distinctiveness and fell within s41(4) based on its geographical and surname significance. When the use of the BARTON mark was considered, the delegate was satisfied the mark was capable of distinguishing watch bands and watch straps. Accordingly, the application could proceed with an amendment to these limited goods.

Planet Plumbing SW Works Pty Ltd v Green Planet Maintenance Pty Ltd [2021] ATMO 32 (23 April 2021)

Unsuccessful oppositions by Planet Plumbing to applications for removal of its PLANET PLUMBING & device trademark registrations shown below alleging no good faith use in the 3 years period ending on 27 May 2019.

The registrations dated from 29 October 1999 and 7 September 2009. The older registration covered plumbing and other services in class 37, while the later registration covered logo design services in class 42.

The removal applicant contended there was no use of these registered marks, but use of the PLANET PLUMBING GROUP Logo mark shown below:

The delegate was satisfied the evidence did not disclose use of the impugned registered marks during the relevant period, but there was use of the PLANET PLUMBING GROUP Logo mark.

The opponent argued that use of the PLANET PLUMBING GROUP Logo mark could be relied upon to establish use of the impugned registered marks. However, the delegate disagreed and considered the additions and alterations reflected in the PLANET PLUMBING GROUP Logo mark substantially affected the identity of the impugned registered marks.

The delegate declined to exercise discretion and directed the impugned registered marks to be removed from the Register. It was more probable than not that the opponent had abandoned these registered marks and there was insufficient reputation enjoyed by the opponent in ‘planet plumbing”.

David Craig & Cathy Lin v David Traeger [2021] ATMO 33 (29 April 2021)

Unsuccessful opposition by Craig & Lin to trademark registration of David Traeger Australia (Stylised) shown below filed on 5 April 2019 for alcoholic beverages containing wine in class 33

The opponents relied on grounds of opposition under ss 58, 60 and 62A but failed to establish any ground.

Under s58, the opponents argued there was a prior registration for the identical mark owned by David Traeger Wines Pty Ltd which was removed from the register prior to commencement of the opposition. However, as the registration rights had ended and there was no evidence as to use of that mark by someone other than the applicant, that ground of opposition failed.

The s60 ground failed because the opponents did not file any evidence to support their assertion that they have used DAVID TRAEGER AUSTRALIA since 1999 to sell wine in Australia and overseas.

There was also no evidence to support the s62A bad faith ground.

Winter Holding Gmbh & Co KG v SASS Clothing P/L [2021] ATMO 34 (30 April 2021)

Successful opposition by Winter Holding to an application for removal of its Betty Barclay (Stylised) trademark registration shown below alleging no good faith use in the 3 years period ending on 30 June 2019.

The registration dated from 10 August 1999 and covered ladies’ fashion garments in class 25.

The opponent relied on Australia use of its registered mark for womenswear since 1999. Its distributorship arrangements temporarily ceased between late 2017 to mid-2019, but direct online sales to Australians continued during this period.

The trade mark use relied upon was by Betty Barclay Group GmbH & Co. KG (BBG) and was not in the exact form as registered, but rather the plain words BETTY BARCLAY without stylisation or the border design.

The delegate considered the use of BETTY BARCLAY relied upon was sufficient to show use of the registered mark. The changes were minor and did not substantially affect the identity of the registered mark. Although depicted in different fonts and without the border, it does not detract from the distinctive element, that is, the words BETTY BARCLAY, which remain the essential feature.

The delegate was also satisfied the use of BETTY BARCLAY by BBG was authorised by the opponent. BBG was ultimately owned by the Opponent and shared common directors during the relevant period. The two companies operated with unity of purpose.

Fit Revolution Pty Ltd v Amazon Europe Core S.a.r.l. [2021] ATMO 35 (30 April 2021)

Unsuccessful opposition by Fit Revolution to trademark registration of AMFIT NUTRITION filed on 17 October 2018 for various dietary and nutritional supplements in class 5.

The opponent relied on grounds of opposition under ss 44 and 60 but failed to establish either ground.

Under s44, the opponent relied on its prior registration for the trade mark Fit NUTRITION FIX (Stylised) shown below covering various wholesale and retail services in class 35 and food and beverage related services in class 43.

However, the delegate considered the overall impression of the respective marks was significantly different and they were not deceptively similar.

Under s60, the opponent relied on use of its stylised registered mark through its online retail store and two physical juicing bar locations in Sydney, as well as through other physical distribution locations in Fitness First and F45 gymnasiums. The delegate was satisfied the evidence relied upon establish the requisite reputation to trigger s60. However, the delegate was not satisfied as to the likelihood of confusion due to the opponent’s reputation, particularly given the overall differences in the respective marks.