Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – August 2019

Icelandic Milk and Skyr Corporation [2019] ATMO 116 (1 August 2019)

The applicant was successful in overcoming a distinctiveness objection raised during examination of its application for trademark registration of SIMPLE SIDES filed on 6 September 2017 for yoghurt in class 29.

The delegate agreed with the applicant that its yoghurt products are not “side dishes” and hence SIMPLE SIDES has no reference to any character or quality of the relevant goods.

 

ALDI Foods Pty Ltd v Gage Roads Brewing Co Ltd [2019] ATMO 117 (1 August 2019)

Unsuccessful opposition by ALDI to trademark registration of ALBY filed on 4 April 2017 for various beverages in class 32.

The opponent relied on grounds under ss42(b), 44 and 60 but failed to establish any ground.

Under s44, the opponent relied on its prior defensive trademark registration for ALDI covering similar class 32 goods, but the delegate did not consider ALBY to be deceptively similar to ALDI.

Under s60, the opponent relied on the Australian reputation of its ALDI mark. Significantly, while the delegate considered the ALDI mark has a reputation in the area of retail services, he was not satisfied this reputation extended to beer and other class 32 beverages; so this ground also failed.

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

 

ALDI Foods Pty Ltd v Gage Roads Brewing Co Ltd [2019] ATMO 118 (2 August 2019)

Unsuccessful oppositions by ALDI to trademark registration of composite marks containing ALBY as shown below filed on 11 October 2017 for various beverages in class 32.

Trademark-Registration-ALBY-Logo-Red

Trademark-Registration-ALBY-Logo-Yellow

Again, the opponent relied on grounds under ss42(b), 44 and 60 but, as was the case with the ALBY word mark opposition, failed to establish any ground.

 

Raymond Hoser v Stewart Gatt [2019] ATMO 119 (2 August 2019)

Unsuccessful opposition by Hoser to trademark registration of Stewy the Snake Catcher Logo shown below filed on 28 December 2017 for snake education and snake catcher services in classes 41 and 44.

Trademark-Registration-Stewy-The-Snake-Catcher-Logo

There was some history between the parties and parts of the evidence were irrelevant to the trade mark dispute.

The opponent relied on grounds under ss 41, 42(b), 44, 58A, 60 and 62A but failed to establish any ground.

Under s44, the opponent relied on his prior trademark registration for a composite mark containing the words Snake Catcher as shown below.

Trademark-Registration-Snake-Catcher-Logo

The delegate did not consider the applied for mark to be deceptively similar to it.

The s60 ground failed because the opponent’s evidence failed to substantiate a reputation derived from use of his registered mark.

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

The s58A ground of opposition was not applicable because the applied for mark was not accepted under the prior continuous use provision.

The s62A bad faith ground failed for lack of evidence.

Under s41, the opponent argued that the words “Snake Catcher” were the essential element of the applied for mark, but the delegate dismissed that argument and noted that, when considered as a whole, the composite mark was clearly sufficiently distinctive.

 

Karen Bazzan v Hitchley & Harrow Pty Ltd [2019] ATMO 120 (6 August 2019)

Unsuccessful opposition by Bazzan to trademark registration of a composite mark containing HITCHLEY & Harrow shown below filed on 17 October 2016 for various apparel in class 25.

Trademark-Registration-Hitchley-Harrow-Logo

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

No evidence was filed by the opponent, so the grounds under ss 58A and 60 could not be established.

Under s44, the opponent relied on a prior registration for the composite mark shown below:

Trademark-Registration-Hampton-Harlow-Logo

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

 

Melissa Spilsted v Marie Mongan [2019] ATMO 121 (12 August 2019)

Successful opposition by Spilsted to an application for removal of her trademark registration for HYPNOBIRTHING AUSTRALIA & Device shown below, alleging lack of intention to use and non-use during the 3 years period ending on 27 January 2017.

Trademark-Registration-Hypnobirthing-Australia-Logo

The trademark registration dated from 10 June 2013 and covered various educational services in class 41 as well as hypnotherapy and medical information services in class 44.

The removal applicant subsequently pursued only the lack of intention to use ground under s92(4)(a).

The delegate was satisfied with the opponent’s evidence as to her use of the registered mark from 25 November 2009 in relation to education and training for parents and practitioners in a method of natural childbirth using hypnotherapy. This evidence adequately rebutted the allegation of lack of intention to use.

 

Royal Agricultural Society of NSW v Mr Gatsby Investments Pty Ltd [2019] ATMO 122 (13 August 2019)

Successful opposition by Royal Agricultural Society of NSW to trademark registration of the composite mark shown below filed on 17 November 2016 entertainment and cultural related services in class 41.

Trademark-Registration-Melbourne-Easter-Show-Logo

No evidence was filed, but the opponent prevailed under the s44 ground, relying on its prior registration for the composite mark shown below which covered similar services.

Trademark-Registration-Sydney-Royal-Easter-Show-Logo

The delegate considered the applied for mark was deceptively similar to the opponent’s registered mark. The delegate noted that while “there are differences between the marks, the similarities in wording, fonts and the manner in which the words and devices are displayed are such that the overall impressions of the two marks are very similar” and “there is a real tangible danger a person of ordinary intelligence would be caused to wonder if that service was provided by the same source as the services provided by the opponent”.

 

Nitro AG v Nitro Circus IP Holdings LP [2019] ATMO 123 (16 August 2019)

Unsuccessful oppositions by Nitro AG to trademark registration of NITRO CIRCUS. There were 2 national trademark applications filed on 1 April 2015 covering various goods in classes 3, 5, 9, 12, 14, 16 18, 21, 24, 25, 28, 29, 30, 32, 35, 38 and 41 as well as an International Registration designating Australia filed on 25 August 2016 covering class 28 goods.

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

Essentially, the opponent relied on prior use and registration of its NITRO trade mark. It is a snowboard and action sports brand with use in Australia from 1995. Its relevant NITRO trademark registrations dated from 21 February 1991 and covered similar goods in classes 25 and 28.

The Applicant promotes motocross bike shows and events, with the first Australian tour being in 2010. It also owns an Australian trademark registration for NITRO-CIRCUS dating from 3 March 2008 in classes 9, 25 and 41.

The s44 ground failed because the delegate did not consider NITRO CIRCUS to be deceptively similar o NITRO in the context of the relevant goods in classes 25 and 28.

The s58 ownership ground necessarily failed because NITRO CIRCUS was not considered to be substantially identical with NITRO.

Under the s60 ground, the delegate expressed doubt as to the reliability of the Opponent’s evidence, but considered the NITRO mark had acquired a reputation of some kind amongst snowboarders. However, given this limited reputation, the delegate was not satisfied as to the likelihood of confusion, even for both marks being used for snowboards.

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

 

Cartier International AG. [2019] ATMO 124 (19 August 2019)

Cartier was unsuccessful in overcoming an objection raised during examination that is application for trademark registration of the shape of a bracelet shown below was not sufficiently distinctive.

Trademark-Registration-Cartier-Bracelet-Shape

The relevant trademark application had a priority date of 15 October 2015 and was a divisional of an earlier application for the same mark. It covered a broad range of class 14 goods.

 

Ezy Auto 123 Pty Ltd v Ezyauto Pty Ltd [2019] ATMO 125 (19 August 2019)

Unsuccessful opposition by Ezy Auto 123 to trademark registration of EzyAuto filed on 8 February 2017 for car dealership and car servicing related services in classes 35 and 37.

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

The opponent relied on use of EZYAUTO123 from 25 November 2015 for car dealerships in Western Australia.

The applicant relied on use of EzyAuto from at least March 2012 for an auto business.

Given the applicant’s earlier use, the s58 ownership ground failed. The opponent argued that a director of the applicant, Mr Carakitsos was actually the first user and that the applicant could not rely on his use to establish ownership, but that argument was not persuasive to the delegate.

The s60 ground failed because the delegate did not consider the evidence relied upon by the opponent was sufficient to establish an Australian reputation in its EZYAUTO123 mark.

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

 

Brillient Investment Publishing Pty Ltd [2019] ATMO 127 (21 August 2019)

The applicant was unable to overcome an objection raised during examination that its certification trademark application for CERTIFIED PORTFOLIO PHILOSOPHY was not capable of distinguishing.

The trademark application was filed on 21 December 2017 for various financial services in class 36.

The applicant filed the Certification Rules but did not file any evidence to show acquired distinctiveness through use.

A certification trade mark is a sign used, or intended to be used, to distinguish goods or services which are dealt with in the course of trade and certified by a person, or by another person approved by that person, in relation to quality, accuracy or some other characteristic.

Under s177 a certification trade mark application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified. In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:

(a) the extent to which the certification trade mark is inherently adapted to distinguish those goods and services; or

(b) the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods and services.

On the timing issue, the delegate considered that a certification trade mark which lacks inherent adaptation to distinguish must be have become adapted to distinguish as at the date the application to register it was filed.

The delegate correctly noted that s41 (which deals with distinctiveness of standard trade marks) does not apply to certification trade marks and that there is a lack of case law on distinctiveness of certification trade marks, yet seemingly went on to apply case law under s41. Although the words “portfolio philosophy” had an ordinary meaning, the inclusion of the word “certified” was sufficient to indicate the applied for mark is being used as a certification trade mark and so satisfied the first characteristic. However, the delegate did not consider the applied for mark has the ability to distinguish goods or services certified by the applicant from goods or services not so certified ( which the delegate considered included those goods or services certified by another person, not being a certifier approved by the applicant) and hence failed the second characteristic. On this aspect, the delegate was again guided by s41 case law and considered  other traders who provide goods or services which are certified by a person or entity other than the applicant (or a certifier approved by the applicant) might legitimately need to use the sign in respect of their goods or services.

It remains to be seen whether the delegate’s reliance on s41 as a guide for the application of s177 is the correct approach as the function of a certification mark is very different to that of a standard mark and capacity to distinguish must necessarily relate back to the definition of a certification mark. Further s41 is expressly excluded from application to certification marks. Also, the delegate’s construction of “goods or services not so certified “ in s177 to include not only goods or services which are not certified at all, but goods or services which have been certified by a person or entity other than the applicant or an approved certifier, may be arguable.

 

Factor Holdings Ltd v Apollo Bicycle Co Pty Ltd [2019] ATMO 128 (28 August 2019)

Unsuccessful opposition by Factor Holdings to trademark registration of FACTOR filed on 24 May 2016 for bicycles and various goods for bicycles in classes 11 and 12.

The opponent relied on grounds under ss 42(b), 43, 58, 60, 62 and 62A but failed to establish any ground.

Essentially, the opponent relied on its prior use of the FACTOR mark for high quality, professional bicycles.

Under s60, the delegate observed that much of the evidence related to the UK and Europe and did not establish the requisite Australian reputation.

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

The s43 ground failed because the opponent was relying on similarity of the respective marks, rather that any connotation in the applied for mark giving rise to a likelihood of deception or confusion.

The s58 ownership ground failed because the evidence disclosed use of FACTOR by the applicant in May 2009 which was before the first Australian use relied upon by the opponent.

The 62 ground failed for lack of evidence as to any representation by the applicant being false in material particulars.

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

 

Real Estate Home Loans Pty Ltd v REA Group Ltd. [2019] ATMO 129 (28 August 2019)

Partly successful oppositions by Real Estate Home Loans Pty Ltd to trademark registration of realestate.com.au Home Loans in word and logo form as shown below filed on 21 February 2017 and 19 June 2017 for various financial services in class 36.

Trademark-Registration-real-estate-com-au-Home-Loans-Logo

For the word mark, the opponent prevailed under the s41 distinctiveness ground. The applicant argued it had already obtained registration of the realestate.com.au word mark based on evidence of acquired distinctiveness. However, the delegate did not consider this persuasive and found that the applied for word mark was not to any extent inherently adapted to distinguish.  Further, the applicant’s supporting evidence of use was insufficient to show this mark had acquired the requisite level of distinctiveness.

For the logo mark, the opponent relied on grounds under ss 42(b), 44, 60 and 62A, but failed to establish any ground.

Under s44, the opponent relied on its prior trademark registration shown below:

Trademark-Registration-Real-Estate-Home-Loans-Logo

 

However, the delegate considered the applied for logo mark was not deceptively similar to this earlier registered mark.

Under s60, the opponent relied on the reputation of its registered mark arising from use since March 2000 for a mortgage broking business directed to residential properties and the delegate accepted this mark had acquired a modest reputation. However, the delegate concluded that any confusion or deception with the applied for logo mark would not arise as a result of that reputation.

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

Finally, the s62A bad faith ground also failed. The delegate was not satisfied the applicant’s conduct in filing the logo mark application was unscrupulous, underhanded or unconscientious in character. The delegate considered that, even if the parties were squarely competitors in business in the same space for mortgage lending services, neither could exert a monopoly over “real estate” or “home loans”, either used separately or together. The applicant’s decision to adopt and seek to register the logo mark, containing the phrases “real estate” or “home loans”, was not made to take advantage of the opponent in some way. Rather it was a decision to use those phrases (as part of the logo mark) for their normal and natural meanings.

 

Sabeeca Marouf v Sonex International (Pvt) Ltd [2019] ATMO 130 (28 August 2019)

Unsuccessful opposition by Marouf to an application for removal of her trademark registration for Sonex Kitchenware, alleging lack of intention to use and non-use during the 3 years period ending on 1 November 2017.

The trademark registration dated from 15 July 2005 and covered kitchen utensils in class 21.

The Opponent, Marouf was the sole director of Terra Pacific Developments Pty Ltd (TPD) and had acquired the Sonex Kitchenware trade mark in July 2016 from Sufyan Bhutta, a director of MB International Pty Ltd. Essentially, the Opponent relied on use of this mark by TPD including invoices issued by this company  referring to SONEX KITCHENWARE as items and dated during the relevant period.

However, the delegate characterised these invoices as being issued by TPD as a distributor for a wide variety of goods. The delegate observed that “sales by a distributor of goods which bear trade marks will not normally constitute use of those trade marks by the distributor: it is the manufacturer of those goods who will normally be the owner of those trade marks.” The delegate went on to conclude “there is nothing before me to suggest that the sales of goods by the Opponent which bear the Trade Mark are other than simply sales by a distributor of goods produced by someone else. On that basis, I am not satisfied that the above sales by TPD constitute use of the Trade Mark by TPD. The Opponent has, therefore, failed to rebut the allegation of non-use.

Further, the Opponent did not make any submissions seeking to rely of the Registrar’s discretion and the delegate directed her Trade Mark to be removed from the Register.