Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – August 2020

NCL Corporation Ltd v Norwegian Brand Ltd [2020] ATMO 131 (3 August 2020)

This concerned oppositions by NCL to trade mark registration of two composite marks containing NORWEGIAN.COM filed on 20 January 2017 for a broad range of goods and services in classes 16, 35, 38, 39 and 43.

NCL’s evidence in support was due by 11 September 2019 but, on 4 September 2019, it requested a 3 months extension to file this. The delegate indicated an intention to refuse the extension, so NCL requested a hearing. NCL filed a Declaration as evidence in support on 10 December 2019.

The reasons given for NCL’s delay in finalising its evidence in support were of a generalised nature and did not satisfy the delegate that it had acted promptly and diligently at all times as required under Regulation 17A.34K; so the extension was refused.

The delegate then went on to consider whether NCL’s late filed Declaration could be admitted under Regulation 21.19 and decided this in favour of NCL. The Declaration included reputation evidence of high probative value and there was considerable public interest in having this information considered by the Registrar rather than oblige NCL to incur the further expense and delay associated with a Federal Court appeal.

PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] ATMO 132 (7 August 2020)

Successful opposition by PDP Capital to trademark registration of WICKED filed on 3 April 2017 (and claiming divisional status from a parent application filed on 28 June 2011) for dips and dessert foods in class 30.

It is also relevant to note the 30 July 2020 Federal Court judgement reported at https://www.selfmark.com.au/trademark-lawyer-sydney-federal-court-wicked/ where PDP Capital, being an owner of the WICKED SISTER brand, failed in its claims against Grasshopper Venture for trademark infringement, misleading or deceptive conduct and passing off arising from its use of the WICKED brand.

The opponent prevailed under the s41 distinctiveness ground and it should be noted that s41 as it stood at 28 June 2011 (prior to the Raising the Bar amendments on 15 April 2013) was applicable.

The delegate was satisfied the ordinary signification of “wicked” is a colloquial word for “excellent” and, when applied to the relevant goods, there is an implication of decadence. It is purely laudatory and does not have any capacity to distinguish. The applicant’s evidence of use prior to 28 June 2011 was insufficient to show the applied for mark had become distinctive in fact as required under s41(6). The supporting evidence showed use of stylised versions, but not use of the plain word WICKED.

Geowan Pty Ltd v Senceive Ltd [2020] ATMO 133 (11 August 2020)

Partly successful opposition by Geowan to trademark registration of GeoWan filed on 13 April 2018 for various goods and services in classes 9, 38 and 42.

The opponent prevailed under the s58 ownership ground by relying on prior Australian use of the GEOWAN word mark and a stylised logo variant since mid 2016. The opponent’s evidence was somewhat vague as to the specific goods and services it offered, but the delegate was satisfied that it had demonstrated ownership for retailing of sensors and other network products as well as advisory and consulting services with respect to the creation of networks as part of the Internet of Things. The delegate considered the opponent’s advisory and consultancy services were the same kind of thing as the applicant’s claim to information, advisory and consultancy services in class 42.

The other grounds of opposition under ss 60 and 62A failed.

When considering how to resolve the opposition the delegate observed that in circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles in Apple Inc. v Registrar of Trade Marks [2014] FCA 1304, but also has a discretion to allow the applicant to amend the trade mark application. Here, given the limited services for which the opponent established ownership, the delegate allowed the applicant to amend its specification to delete information, advisory and consultancy services from its class 42 specification.

Orientis Gourmet v ABCDEX Pty Ltd and Burkhard Geiger [2020] ATMO 134 (11 August 2020)

Unsuccessful opposition by Orientis Gourmet to an application for removal of its trademark registration for LOV ORGANIC (Stylised) alleging non-use during the 3 years period ending on 5 March 2018.

The trademark registration dated from 4 May 2012 and covered tea, non-medicinal infusions and coffee in class 30.

The opponent alleged use of the registered mark in Australia since at least 2013 for tea and infusions, including through the Myer retail store and subsequent sales direct to Australian consumers through its website. However, some of the invoices and activity relied upon were from before the relevant 3 years period, images of product packaging were unclear, the Myer calalogues and Instagram account material were undated and the website printouts were after the relevant period. There were 2 invoices to Australian consumers in the relevant period, but the only reference to the trade mark was as part of the domain name www.lov-organic.com and the delegate considered that “in the context used on the invoices the domain name is not used as a trade mark rather it is simply used as an address for a website” and so they did not assist the opponent.

The delegate considered the opponent’s evidence fell well short of establishing relevant Australian use and directed the trade mark be removed from the Register.

Urban Clean IP Pty Ltd v Urban You Pty Ltd [2020] ATMO 135 (11 August 2020)

Unsuccessful opposition by Urban Clean to trademark registration of URBAN YOU filed on 9 August 2017 for various domestic cleaning, gardening and related services in classes 35, 37 and 44.

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

The opponent relied on prior use and registration of its URBAN CLEAN trade mark.

Under s44, the delegate considered the applied for URBAN YOU mark was not substantially identical with or deceptively similar to the opponent’s registered URBANCLEAN mark.

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

ROLEX SA v LG Display Co Ltd [2020] ATMO 136 (13 August 2020)

Partly successful opposition by Rolex to trademark registration of ROLED filed on 23 January 2018 for various goods in class 9 including a claim to “wrist mounted telecommunication machines and implements being watches” (the Challenged Goods).

The opposition was confined to the Challenged Goods and opponent prevailed under the s60 ground by relying on the Australian reputation of its ROLEX mark for watches.

As a threshold issue, the delate considered that smart watches in class 9 were similar goods to watches in class 14; although this was not directly relevant to the s60 ground of opposition.

In any event, the delegate was understandably satisfied that the opponent’s ROLEX mark had acquired a substantial Australian reputation and, given the similarities between ROLED and ROLEX, there would be a likelihood of confusion.

Significantly, this is an instance where the fame of the opponent’s ROLEX mark did not necessarily reduce the risk of confusion.

The delegate directed the Challenged Goods be deleted from the ROLED trade mark application.

The Star Pty Ltd [2020] ATMO 137 (17 August 2020)

The applicant failed to overcome examination objections to trademark registration of THE STAR filed on 30 January 2019 for various food and beverage related services in class 43. The application was a divisional with a priority date of 24 August 2015.

The objections were under s44 based on prior trade mark registrations for STAR COFFEE CO CAFÉ BAKEHOUSE Logo, STAR CAR WASH CAFE (word) and Star Buffet (word and Logo) covering similar services.

The delegate considered the definitive article THE provided minimal differentiation, while the word STAR was the dominant cognitive cue and the most striking element of each mark. Consequently, the delegate agreed with the Examiner that the respective marks were deceptively similar and rejected the application.

Yarrum Group Pty Ltd v iGear.com.au [2020] ATMO 138 (17 August 2020)

Partly successful opposition by Yarrum Group to trademark registration of iGear (Stylised) filed on 12 July 2016 for various wearable devices and other goods in class 9 as well as retailing and other services in class 35.

The opponent prevailed under the s58 ownership ground. The other grounds under ss 42(b), 59 and 60 failed.

The opponent asserted use since January 2011 of the iGear trade mark for retailing of mobile phones and other electronic products as well as repair services.

The delegate did not consider the opponent’s evidence demonstrated use of the iGear mark for the goods sold through its retail store, but the delegate considered the retail services provided by the opponent were the same kind of thing as the applicant’s claims to retail and wholesale services in class 35 and so the s58 ground was made out for those services.

The delegate then went on to consider the other grounds of opposition in the context of the applicant’s remaining goods and services.

The opponent’s evidence on the s59 lack of intention to use ground  was insufficient to shift the onus on to the applicant and so that ground failed.

The s60 ground also failed because the opponent’s evidence did not show a sufficient Australian reputation, particularly as it merely operated a single retail store in Alice Springs, Northern Territory.

The opponent also relied on its reputation 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.

Cox Automotive Repairs Pty Ltd v Cox Automotive Inc [2020] ATMO 139 (18 August 2020)

Unsuccessful opposition by Cox Automotive Repairs to trademark registration of COX AUTOMOTIVE filed on 3 February 2016 for various motor vehicle related goods and services in classes 9, 35, 36, 39 and 42.

The opponent relied solely on the s60 reputation ground but did not file any evidence and so could not discharge its onus to establish a requisite Australian reputation and the likelihood of deception or confusion.

Hub Ventures Pty Ltd v Zig Zag Hub Pty Ltd [2020] ATMO 140 (24 August 2020)

Unsuccessful opposition by Hub Ventures to trademark registration of ZIG ZAG HUB Logo shown below filed on 24 June 2016 for various services in classes 35, 36, 41, 42 and 43.

The applicant operates a business in Wollongong, NSW offering shared office spaces with the opportunity for users to collaborate with others from different industries.

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

Under s44 the opponent relied on its prior registration for a series of 24 trade marks containing the word HUB with various Australian geographical place names, an example of which is shown below:

The opponent has, since 2010, provided co-working spaces and related services under these various marks.

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

The s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to the opponent’s registered marks, particularly as the word “hub” is descriptive and the respective marks conveyed a significantly different overall impression.

The evidence was insufficient to establish the s62A bad faith ground.

Steven Muller v THINKVID PTY LTD [2020] ATMO 141 (28 August 2020)

Unsuccessful opposition by Muller to trademark registration of THINKBONDIBEACH filed on 12 October 2018 for various services in class 35.

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

Neither party filed evidence, but the applicant filed written submissions.

The opponent relied on the prior registered mark shown below which covered similar class 35 services.

However, the delegate did not consider the applied for mark to be deceptively similar to this registered mark. Although both marks share the words BONDI and THINK, the overall impressions conveyed by the respective trade marks are very different. 

PDM Parthian Distributor & Marketing Adviser GmbH v BrewDog Plc [2020] ATMO 142 (28 August 2020)

Unsuccessful opposition by PDM to an application for removal of its trademark registration for Black Punk alleging no intention to use and no actual use up to 22 November 2017.

The trademark registration dated from 15 October 2014 and covered protein-containing beverages in class 29 and other non-alcoholic beverages in class 32.

A presumption of intention to use arises from filing of a trade mark application, so there is an initial onus on the removal applicant. However, where an opponent files evidence which goes beyond a mere statement of intention, it is open to the Registrar to make a finding, based on the totality of the evidence, as to an absence of intention to use.

Here, the opponent did file evidence in support but none showing actual commercial use of the Black Punk mark. The removal applicant did not file any evidence which could shift the presumption of intention. It could only rely on submissions to discharge its onus by persuading the Registrar that the opponent’s evidence showed a lack of intention to use the registered mark as at the 15 October 2014 filing date.

The opponent’s evidence contained gaps and the delegate was critical of the absence of material from the opponent’s records which pre-dated or was concurrent with the relevant filing date. The delegate concluded that the opponent’s intention had risen no higher than an uncertain or indeterminate possibility that it might use the Black Punk mark in Australia. Hence, it lacked the requisite intention to use this mark in Australia as at the 15 October 2014 filing date.

To make matters worse for the opponent, the delegate was not prepared to exercise discretion and directed the Black Punk trade mark to be removed from the Register in its entirety.

Southcorp Brands Pty Ltd v Shenzhen Fernfortune International Wines [2020] ATMO 143 (31 August 2020)

Successful opposition by Southcorp to trademark registration of ‘fernfortune’ filed on 10 July 2018 for various alcoholic beverages in class 33.

The opponent prevailed under the s62A bad faith ground.

This is another instance of a Chinese business seeking to trade off the reputation of the opponent’s well known PENFOLDS brand. This translates to the Chinese approximation of BEN FU and the opponent has also adopted the Chinese Characters for BEN FU as a trade mark.

The applicant uses the Chinese Characters for FEN FU with interchangeable English translations of ‘Fernfortune’ or ‘Fernfolds’ and the English version of its website displays ‘Fernfolds’.

The Chinese Characters for ‘Fernfortune’ (which translates as FEN FU) are similar to the Chinese Characters for BEN FU.

The delegate referred to the DC Comics case and was satisfied the applicant’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.