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.