Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – August 2021

Gopro Inc v Ross Walmsley [2021] ATMO 76 (2 August 2021)

Unsuccessful opposition by Walmsley to an application for removal of his trademark registration for Gopro Logo shown below alleging no good faith use in the 3 years period ending 28 December 2019.

The registration dated from 14 January 2013 and covered a broad range of goods in classes 25 and 32.

The evidence supported the taking of preliminary steps consistent with an intention to use the registered mark, but had not reached the stage of objectively committed to offering or supplying goods bearing this mark in the course of trade.

The delegate was not satisfied there was any obstacle to use of the registered mark and found no basis for a favourable exercise of discretion; so the Gopro Logo mark was removed from the Register.

Plaspro Enterprises Pty Ltd [2021] ATMO 77 (3 August 2021)

The applicant was unable to overcome a distinctiveness objection raised during examination of its application for registration of the trade mark Bottles of Australia filed on 8 April 2020 for goods in classes 12 and 21 and services in class 35.

The applicant acquired the Bottles of Australia business in February 2018 and relied on its use since then as well as use by its predecessor in business since 1989.

The delegate noted the phrase ‘Bottles of Australia’ has a natural ordinary signification which describes a product and its origin. That is, bottles that originate from, are sold in or otherwise relate to Australia.  The evidence disclosed different variations of the mark and was generally deficient in clearly establishing the acquisition of distinctiveness.

The application was refused for all goods and services except business administration in class 35.

Bangkok Broadcasting & T.V. Co., Ltd v Seven Network (Operations) Limited [2021] ATMO 78 (3 August 2021)

Partly successful opposition by Bangkok Broadcasting to an application for removal of its trademark registration for 7 Logo shown below alleging no good faith use in the 3 years period ending 1 July 2019.

The registration dated from 16 November 2006 and covered various goods in class 9 and services in classes 38 and 41.

The delegate considered the evidence supported Australian use of the registered mark for streaming services through its BUGABOO INTER app and YouTube channel with a small but not insignificant number of Australian consumers. However, the delegate did not accept that use of this mark on it website and social media was targeted to Australia.

Hence the delegate was satisfied there was relevant use of the registered mark for ‘television broadcasting; Hi-speed Internet or broadband Internet broadcasting’ in class 38 and ‘television entertainment’ in class 41.

This decision has been appealed.

Silly Sollys Group Pty Ltd v cc group investments pty ltd [2021] ATMO 79 (5 August 2021)

Unsuccessful oppositions by Silly Sollys Group to applications for removal of its 3 registrations for trade marks containing CRAZY CLARK’S alleging no good faith use in the relevant 3 years period ending on 19 and 29 July 2019.

The registrations dated from 16 August 1999 and 11 March 2002 and covered various retailing and wholesaling services in class 35.

The CRAZY CLARK’S discount retail store business was founded in 1999. Peter Clark was one of the founders and is now the sole director and shareholder of the removal applicant. This business was sold in 2002.

The opponent’s predecessor in title, DSG Holdings Pty Ltd purchased the CRAZY CLARK’S business in 2013 but went into administration between 2014 – 2017 and there was no use of the registered marks during this period. The delegate considered this administration period was not an obstacle to use. The relevant trademark registrations were assigned from DSG to the opponent in September 2019.

The delegate was not satisfied the evidence supported the opponent’s assertion that DSG had authorised another party to use to CRAZY CLARK’S trade marks.

The delegate also found no basis for a favourable exercise of discretion; so the CRAZY CLARK’S marks were removed from the Register.

THF Innovation Pty Ltd v Caterpillar Inc [2021] ATMO 80 (5 August 2021)

Partly successful opposition by THF Innovation to an application for removal of its  registration for the trade mark BLACK CAT Logo shown below alleging no good faith use in the relevant 3 years period ending 1 February 2018 for the registered class 25 goods.

The registration dated from 24 June 2008 and covered various goods in classes 9, 13, 18 and 25.

The opponent was able to establish relevant use for certain class 25 goods and the registration was retained for “leather belts; weatherproof vests; protective clothing against heat or cold (other than for accident or injury) being compression shirts and weight bearing vests; camouflage clothing and sniper suits”.

Newzone Nominees Pty Ltd v IP Machinery Pty Ltd [2021] ATMO 81 (6 August 2021)

Unsuccessful opposition by Newzone to trademark registration of TURBODRUM filed on 13 October 2017 for feeder drums for combine harvesters in class 7.

The opponent relied on grounds of opposition under ss 43, 58, 60 and 62A but failed to establish any ground.

No evidence was filed and so the s60 and s62A grounds were not substantiated.

Under s43, the opponent incorrectly alleged confusion with its identical mark, but there was no evidence the applied for mark contained a connotation likely to deceive or cause confusion.

Under s58, the opponent alleged use since about October 2016 of the identical TURBODRUM mark for essentially the same goods but, since no evidence was filed to substantiate this allegation, this ground also failed.

CSR Building Products Limited v Placoplatre [2021] ATMO 82 (10 August 2021)

Partly successful opposition by CSR to trademark registration of GYPREX filed on 27 August 2018 for various goods in classes 6, 17, 19 and 37.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its GYPROCK trade mark used for plasterboard building products and related accessories.

The delegate significantly restricted the applicant’s goods to specific goods in classes 6 and 19. This was despite the applicant having used the GYPREX mark in Australia since 2002 for goods including ceiling tiles.

The delegate then went on to consider other grounds of opposition under ss 42(b), 44 and 58 for the restricted goods, but dismissed those grounds.

Significantly, the delegate did not consider the GYPREX mark to be deceptively similar to any of the opponent’s registered GYPROCK marks in the context of the applicant’s restricted goods which would likely be purchased by sophisticated consumers.

AR & SS Pty Ltd v Bilal Hammoud [2021] ATMO 83 (10 August 2021)

Successful opposition by AR & SS to trademark registration of Hair Crew & Co filed on 13 August 2019 for various hair care goods in class 3 and hair care related services in class 44.

The applicant was not professionally represented and did not file any evidence.

The opponent prevailed under the s62A bad faith ground based on the parties previously being business partners.

LTFT Pty Ltd as Trustee for the Davey Family Trust No. 2 v Geek Group Pty Ltd [2021] ATMO 84 (16 August 2021)

Successful opposition by LTFT to trade mark registration of “Need I.T. Fixed? SuperFixed, SuperFast!” filed on 16 March 2019 for various computer related services in classes 37 and 42.

The opponent prevailed under the s58 ownership ground.

There was a rather complex corporate history and transfers of ownership of the relevant trade mark, but the applicant’s own evidence established that it was not the true owner of this trade mark at the filing date. Rather, the trade mark at that time was owned by DaveyCo which did not transfer the trade mark to the applicant until 29 July 2020.

Monster Energy Company v PepsiCo [2021] ATMO 85 (16 August 2021)

Unsuccessful opposition by Monster Energy to trademark registration of MONSTER MUNCH filed on 25 September 2018 for various goods in classes 29 and 30.

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

Reliance was placed on use and registration by the opponent of its various marks containing or consisting of MONSTER.

Under s44, the opponent referred to its registration for MONSTER MEAL DEAL, but the delegate did not consider MONSTER MUNCH to be deceptively similar to it.

Under s60, the delegate was satisfied the opponent had established a significant Australian reputation in its MONSTER ENERGY word and logo trade marks in relation to energy drinks. However, this reputation did not extend to the plain word MONSTER or any stylised version of it. The evidence relied upon by the opponent demonstrated use of MONSTER ENERGY or the word MONSTER in combination with a Claw Device. The delegate was not satisfied as to there being a likelihood of confusion. Consumers are unlikely to view MONSTER MUNCH as a brand extension of the opponent’s MONSTER ENERGY word or logo trade marks.

The opponent also relied on the reputation of its MONSTER trade marks 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 opponent has appealed this decision.

Newmark Capital Limited v JamFactory Contemporary Craft & Design Incorporated [2021] ATMO 87 (19 August 2021)

Partly successful opposition by Newmark Capital to trademark registration of JamFactory filed on 16 June 2017 for various goods and services in classes 14, 20, 21 and 41.

The opponent partly established the s44 ground based on its prior registration for JAM FACTORY in classes 25, 35, 36, 41 and 43.

The opponent has operated a shopping, dining and entertainment complex in Melbourne known as Jam Factory since 1979.

The applicant has been using the JamFactory mark from 1977 for various art exhibition services, museum facilities, workshops and courses for artists and designers, and sale of works of arts and craft from locations in Adelaide.

Under s44, the delegate considered the applicant’s class 14 jewellery goods were closely related to the opponent’s registered retail services in class 35. There was also direct overlap in the respective class 41 services. The applicant’s goods in classes 20 and 21 were not similar or closely related to any of the goods or services covered by the opponent’s registered mark. However, the applicant could rely on prior continuous for its class 41 services, but not its class 14 jewellery goods. The applicant was a retailer of jewellery produced by artists and did not use the JamFactory mark in relation to those goods. Hence, the opposition was successful in respect of the applicant’s claim to class 14 goods.

Since the opponent’s use of its JAM FACTORY mark post-dated the applicant’s use, the s58A ground of opposition failed.

The s60 ground also failed because the opponent’s evidence was insufficient to establish reputation in its JAM FACTORY mark.

The applicant was permitted to delete class 14 and its trade mark application proceeded to registration for the remaining goods and services.

Bayerische Motoren Werke Aktiengesellschaft v Electracom Pty Ltd [2021] ATMO 86 (20 August 2021)

Unsuccessful opposition by BMW to trademark registration of the Device mark shown below filed on 3 May 2018 for various electrical accessories in class 9.

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

Essentially, the opposition was based on use and registration of the opponent’s Logo mark shown below:

This decision is under appeal.

Pump Factory Pty Ltd and Zoran Kacavenda v TP-LINK Research America Corporation [2021] ATMO 88 (23 August 2021)

Unsuccessful opposition by Pump Factory and Kacavenda to an application for removal of Pump Factory’s registration for the trade mark ‘kasa’ alleging no good faith use in the relevant 3 years period ending 8 December 2019 for the registered goods.

The registration dated from 11 July 2012 and covered various locks for entry doors in class 9.

The evidence did not establish use of the kasa trade mark during the relevant period and the delegate found no basis for a favourable exercise of discretion; so the kasa mark was removed from the Register.

Formula 3 Management P/L v Federation Internationale De L’Automobile [2021] ATMO 91 (24 August 2021)

Unsuccessful opposition by Formula 3 Management to trademark registration of FORMULA 3 filed on 18 December 2015 for various goods and services in classes 12, 35 and 41.

The opponent relied on grounds of opposition under ss 43, 58, 60 and 62A, but failed to establish any ground.

The opponent was responsible for management of the FORMULA 3 series in Australia under arrangements with the Confederation of Australian Motor Sport Ltd (CAMS) which was a member organisation of the applicant. It could not establish any proprietary right to the applied for mark and so the s58 ownership ground failed.

Similarly, the s60 ground could not be established. The reputation acquired from use of the FORMULA 3 mark by the opponent accrued to the benefit of the applicant and there was no evidence that persuasively established the Australian racing community has come to associate the opponent (as opposed to the applicant or CAMS) with this mark.

The s 43 and s 62A grounds also failed.

Cosmetic Warriors Limited v Australian Therapeutic Supplies Pty Ltd [2021] ATMO 89 (26 August 2021)

Unsuccessful opposition by Cosmetic Warriors to an application for removal of its registration for the trade mark LUSH alleging no good faith use in the relevant 3 years period ending 13 August 2019 for the registered class 5 goods.

The registration dated from 18 December 1996 and covered various goods in classes 3 and 5.

The evidence relied on by the opponent showed invoices issued by Lush Australia Retail Pty Ltd, but was insufficient to establish this and other related Australian companies operated with a unity of purpose with the registered owner which was a UK company and there was no evidence of relevant licence agreements or quality control. Hence the evidence did not establish authorised use of the LUSH mark during the relevant period for the registered class 5 goods.

The delegate found no basis for a favourable exercise of discretion. In doing so the delegate made a finding that the evidence relied upon did not show use of the LUSH mark for any goods which could be classified or described as ‘pharmaceutical preparations and substances; medicated products and preparations for the care of skin, hair, teeth and nails’. The relevant products were properly characterised as cosmetic and in class 3. The marketing terminology did not claim these products have a therapeutic or medical use. Significantly, there was evidence from a registered pharmacist to this effect. The delegate commented that “simply because cosmetic goods in class 3 may be similar to pharmaceutical or medicated goods in class 5 is not sufficient reason on its own to warrant leaving the Trade Mark on the Register for all or part of the Removal Goods. I note that, if I were to grant the application for partial removal, the scope of protection that remains would be the class 3 goods and any similar or closely related services, which would be broad enough to prevent consumer confusion.” Hence, the delegate considered the public interest would be served by removal of all the class 5 goods from the Register.

Calvin Klein Trademark Trust v Korea Ginseng Corp [2021] ATMO 90 (27 August 2021)

Partly successful opposition by Calvin Klein to trademark registration  of CJK filed on 28 December 2018 for various retail and wholesale services in class 35.

The opponent partly prevailed under the s60 ground by relying on the reputation of its CK trade mark.

The other grounds of opposition under ss 42(b), 44 and 58 failed.

The applicant was permitted to delete retail or wholesale services for toiletries and cosmetics and its trade mark application proceeded to registration for the remaining services.

Corn Products Development Inc. v Cargill Inc. [2021] ATMO 92 (30 August 2021)

Unsuccessful opposition by Corn Products to trademark registration of CLEARFLO filed on 28 June 2019 for flavor enhancers used in food and beverage products in class 30.

The opponent relied on grounds of opposition under ss 42(b), 44, 58, 60 and 62A, but failed to establish any ground. It filed evidence , but did not file submissions or participate in the hearing.

Reliance was placed on the opponent’s prior registrations for COL-FLO, PURE-FLO and THERMFLO, as well as use of these marks and another INSTANT CLEARJEL mark for starches, sweeteners, corn oils and other ingredients sold at a wholesale level to customers in the savoury, bakery and dairy sectors of the foods industry.

The delegate did not consider the applied for CLEARFLO mark to be deceptively similar to any of the opponent’s registered marks and so the s44 ground failed.

Under the s58 ownership ground, the opponent relied on prior use of its COL-FLO mark, but the delegate did not consider CLEARFLO to be substantially identical to it.

Under s42(b) and s60, the opponent relied on the reputation of its marks, but the delegate was critical of the evidence relied upon to establish reputation and, given the differences in the respective marks, was not satisfied as to there being a likelihood of confusion.

The s62A bad faith ground also failed. Mere awareness of the opponent’s marks was insufficient to establish bad faith.

Zuru (Singapore) Pte Ltd [2021] ATMO 93 (31 August 2021)

The applicant was unable to overcome a non- distinctiveness objection raised during examination of its application for trademark registration of YORK ST. filed on 27 May 2020 for various tea related products in class 30.

The delegate considered YORK ST. has an ordinary signification as a street name and it was reasonable to suppose other traders may have a legitimate interest in using this geographical name to identify their similar goods. It had some degree of inherent adaptation to distinguish the relevant goods, but not enough to qualify for registration without supporting evidence of use. Since the applicant di not file any such evidence, the trade mark application was refused.