Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – December 2019

TOMTOM International B.V v Schenzhen Tomtoc Co Ltd [2019] ATMO 170 (2 December 2019)

Successful opposition by TomTom to trademark registration of TOMTOC filed on 6 March 2017 for various bags in class 18.

The opponent prevailed under the s60 ground by relying on the Australian reputation derived from use of its TOMTOM trade mark for navigation equipment and related goods in Australia from 2005.

The delegate was satisfied that, given the opponent’s reputation and the degree of similarity between the respective trade marks, it is easy to anticipate a circumstance where a consumer, familiar with the opponent’s TOMTOM mark, particularly in relation to its cases and accessories, would see the applied for TOMTOC mark used on goods such as bags and cases or on travel accessories as being connected with the opponent.

 

Johnson & Johnson Pte. Ltd. v Michael Rich [2019] ATMO 171 (3 December 2019)

Unsuccessful opposition by Johnson & Johnson to trademark registration of ENRICH Dermatology Cosmetic Clinic Logo shown below filed on 20 December 2016 for beauty and skincare products in classes 3 and 5 as well as related services in class 44.

Trademark-Registration-Enrich-Dermatology-Logo

The trademark application was accepted with endorsements showing reliance on prior continuous use and honest concurrent use.

The opponent pursued only the s41 distinctiveness ground of opposition, but failed to establish this ground.

The delegate noted that the word ‘enrich’ by itself is not registrable as it is a term other traders in the applicant’s goods may use but, on balance, considered that the applied for mark as a whole is sufficiently inherently adapted to distinguish the applicant’s goods from the goods of other traders. The words ‘dermatology’ and ‘cosmetic clinic’ are not directly descriptive of the applicant’s goods. A consumer is unlikely to read the ‘enrich’ element by itself. Rather such a consumer is likely to perceive the applied for mark as indicating a connection between the applicant’s goods and a cosmetic clinic or dermatology practitioner trading under the Enrich name. The words ‘dermatology’ and ‘cosmetic clinic’ do not simply embellish ‘enrich’, rather they change the overall concept of the trade mark from a descriptive term to one that refers to a product being supplied from a particular and identified cosmetic clinic. Hence, the delegate did not consider it likely that other traders, in the ordinary course of their business and without any improper motive, will think of or desire to use the applied for mark, or something closely resembling it, in respect of the applicant’s goods.

 

Scotch Whisky Association v Cristian Andrei [2019] ATMO 172 (3 December 2019)

Unsuccessful opposition by Scotch Whisky Association to trademark registration of CLYDE RIVER filed on 11 November 2016 for various alcoholic beverages including distilled alcoholic beverages in class 33.

The opponent relied on grounds of opposition under ss 41, 42(b) and 43 but failed to establish any ground.

Under the s41 distinctiveness ground, the delegate was not satisfied any of the geographical references to Clyde River impacted upon the inherent distinctiveness of this term, Significantly, evidence filed in relation to the distilleries on the River Clyde in Scotland post-dated the filing date of the applied for mark and was not a relevant consideration for this ground. Also, a ‘Scotland Food and Drink’ article dated 22 March 2017 stated that there have been no whisky stills on the banks of the River Clyde for more than a century.

Under the s42(b) contrary to law ground, the delegate observed that if the applicant was to label their goods as ‘Scotch Whisky’ or ‘originating in Scotland’, it would be a contravention of the law of trademarks in relation to Certification Marks, as well as possible breaches of regulatory laws. However, allegations of impropriety, such as misleading and deceptive conduct or false representations require cogent evidence and there was nothing to show the applicant has any intention to contravene a law, so this ground was not established.

Under the s43 ground, the opponent argued that the applied for mark connotes an association with Scotland and use of it would be likely to deceive or cause confusion as it would indicate whisky from Scotland. However, the delegate was not persuaded by this and noted that the large number of other Clyde Rivers around the world further dilute any association with Scotland.

 

Aldi Foods Pty Ltd [2019] ATMO 174 (10 December 2019)

Aldi’s application for trademark registration of Work Wear Protective Clothing Logo shown below filed on  11 June 2018 for various goods in classes 6, 8, 9, 21 and 25 was refused for insufficient distinctiveness.

Trademark-Registration-Work-Wear-Protective-Clothing-Logo

The delegate considered the applied for mark fell into the category of composite marks that consist of descriptive words surmounted by mere embellishments and there was no supporting evidence of use to demonstrate acquired distinctiveness.

 

Steven Scott Y W Penson v John Clifford Smyth [2019] ATMO 175 (11 December 2019)

Unsuccessful oppositions by Penson to trademark registration of Aquarian Party, Aquarian Movement, AQUARIAN and AQUARIANS variously filed on 10 and 21 November 2016 and 28 April 2017 for information services regarding political issues in class 45.

The opponent relied on grounds of opposition under aa 41, 42, 43, 44, 58, 58A, 59, 60 and 62A but failed to establish any ground.

The applicant died on 6 July 2018 shortly after the opponent filed evidence in support. Despite no legal representative coming forward to assume responsibility and proceed with the trade mark applications under s217, the delegate took the view there was no provision in the Trade Marks Act which permitted him to treat the applications as discontinued.

The opponent relied on prior trademark registrations and use of AQUARIAN for bottled water and related goods and services, but the applicant’s services were very different and so the grounds of opposition under ss 42(b), 44 and 60 failed.

The s41 distinctiveness ground failed for lack of evidence.

The s43 ground failed because the opponent was seeking to rely on the reputation of his AQUARIAN mark rather than point to any connotation in the respective applied for marks likely to deceive or cause confusion.

The s58 ownership ground failed because there was no evidence that the opponent’s prior use of the AQUARIAN mark was in relation to any services which were the same kind of thing as the applicant’s services.

The s58A ground was irrelevant because the applied for marks were not accepted under s44(4).

The s59 lack of intention to use ground failed for insufficient evidence.

The s62A bad faith ground was largely based on the applicant allegedly being aware of the opponent’s AQUARIAN mark, but there was no evidence of bad faith.

 

Mojosurf Pty Ltd v Australia Hotels and Properties Limited [2019] ATMO 176 (11 December 2019)

Successful opposition by Mojosurf to trademark registration of Mojo Nomad Logo shown below filed on 21 November 2017 for various accommodation and food/beverage services in class 43.

Trademark-Registration-Mojo-Nomad-Logo

The opponent prevailed under the s60 ground by relying on the Australian reputation of its family of trade marks containing or consisting of MOJO which were used  in relation to the provision of packaged surf tours, lessons, meals and accommodation.

 

3Floorsup Pty Ltd v Fiix Inc. [2019] ATMO 177 (11 December 2019)

Unsuccessful opposition by 3Floorsup to trademark registration of FIIX filed on 3 March 2017 for various software related services in class 42.

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

The opponent provides websites and mobile software applications. It developed a computerised maintenance management system directed to the wind and energy industry in 2008 which was called WTGservice and subsequently rebranded in November 2015 to FIXD. It owned registrations for its FIXD and FIXD Logo marks dating from 1 December 2016 and covering software as a service in class 42.

The applicant marketed a competing software product under the FIIX trade mark with Australian activity commencing in May 2009.

The s44 ground failed because the delegate did not consider the applied for FIIX mark to be substantially identical with or deceptively similar to the opponent’s prior FIXD word or logo marks, particularly given the sophisticated nature of the target audience for the relevant software.

The s58 ownership ground also failed given the delegate’s finding that the opponent’s prior FIXD word and logo marks were not substantially identical with the applied for FIIX mark.

The s60 ground failed because the delegate was not satisfied the opponent’s evidence demonstrated a sufficient Australian reputation in the FIXD mark.

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 or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

The s62A bad faith ground also failed. The applicant’s FIIX trade mark in the USA, EU, and Canada pre-dated the opponent’s FIXD marks and the delegate accepted that the applied for mark was merely an extension into Australia of a trade mark already in use internationally by the applicant.

 

Xero Limited v Muneebuddin Mohammed [2019] ATMO 178 (17 December 2019)

Successful opposition by Xero to trademark registration of ZERO logo shown below filed on 3 May 2017 for advertising in class 35 and mobile telephone communication services in class 38.

Trademark-Registration-Zero-Logo

 

The opponent prevailed under the s60 ground by relying on the Australian reputation of its XERO trade mark used since 2007 in relation to cloud based accounting software. The delegate accepted there is a modern convergence between mobile phones, mobile internet data, cloud computing software and services, and advertising services.

 

VIVATICKET SPA [2019] ATMO 179 (17 December 2019)

An application under s224 for an extension to file submissions and request a hearing in respect of a proposal by the Registrar to cease protection of the AU designation of its VIVATICKET International Registration (IRDA) was refused.

In a rather unusual situation, the IRDA was accepted and advertised for opposition despite IP Australia issuing a correction indicating that acceptance was null and void.

The IRDA was subsequently opposed by Qantas Holidays Ltd and the parties were given until 16 July 2019 to file submissions. The holder did not respond to this and IP Australia issued a letter on 29 August 2019 indicating protection of the IRDA had ceased. The holder, on 20 September 2019, belatedly requested a hearing which was refused by IP Australia. The holder then, on 24 September 2019, filed requests for extensions to 1 November 2019 to file submissions and request a hearing.

The delegate found no error or omission by the Registrar and so s224(1) did not apply.

The delegate then considered the discretionary provision under s224(2) as to whether there was any error or omission attributable to the holder or its agent which caused the failure to do the relevant act. The error relied upon was the belief by the holder’s representative that, if protection ceased, the IRDA would revert to being accepted and under opposition when, in fact, this was not the case. In this regard, the delegate noted that, “had the Trade Mark been the subject of a standard application and not a request to extend protect of an IRDA, the relevant provisions applying would be ss 84A to 84D of the Act and that the effect of s 84C is that if registration is revoked the registration becomes a trade mark application followed by possible opposition or revocation of acceptance with re-examination. The provisions under which the Registrar ceases protection of an IRDA, being Reg 17A.42A to 17A.42D of the Regulations, differ from ss 84A to 84D and do not provide for this; rather protection is ceased and the Holder must file a new request for extension of protection.”

Although the delegate considered this was a genuine error, he considered that discretion should not be exercised because allowing the extension would serve no practical purpose as the Registrar does not have the power to revive protection of an IRDA which has ceased. An extension under s224(3) failed because, like s224(2), it also involves discretion. The delegate also found there was no basis for setting aside the Registrar’s earlier decision to cease protection of the IRDA.

As such, the holder’s only recourse was to seek a review with the Administrative Appeals Tribunal, or to file a new IRDA.

 

Celli S.p.A v Inlon Pty Ltd [2019] ATMO 180 (17 December 2019)

Successful opposition by Celli to trademark registration of CELLI Logo shown below filed on 3 November 2016 for agricultural implements in class 7.

Trademark-Registration-Celli-Logo

The opponent prevailed under the s58 ownership ground.

The opponent is a manufacturer and exporter of farming equipment. It commenced business operations in Italy in 1955 using the applied for mark and exported machinery to Australia bearing this mark in the 1970s. Clearly it was the author and first user of the applied for mark in Australia.

The applicant was the opponent’s exclusive Australian distributor and contended that it acquired Australian ownership rights in 2002 or 2003 arising from the transfer of goodwill from the former distributor which was a financially controlled subsidiary of the opponent. That subsidiary was previously the registered owner of the mark in Australia, but that registration was not renewed and was removed from the Register in 2008.

The delegate considered it unlikely for that subsidiary to be the beneficial owner and the applicant could not produce evidence showing the purported assignment of the mark, or that the transfer of goodwill included rights to the mark. There was also nothing to support the applicant’s other contention that the opponent had abandoned its common law rights to the mark.

 

Western Australia Swimming Association Inc. [2019] ATMO 181 (18 December 2019)

The applicant sought trademark registration of the WEST SWIM ESSENTIAL SKILLS FOR LIFE Logo mark shown below filed on 20 May 2019 for services in classes 36 and 41, primarily relating to aquatic events and services.

Trademark-Registration-West-Swim-essential-skills-for-life-Logo

During examination, an objection under s44 was raised based on the prior registered mark shown below which covered similar class 41 services.

Trademark-Registration-West-Swim-Logo

The applicant argued the respective marks were not deceptively similar, but the delegate agreed with the Examiner and considered that “consumers are more likely to recollect and focus on the common element WEST SWIM and are likely to be deceived or confused as to the trade source”.

 

Beckman Coulter, Inc v Gen-Probe Incorporated. [2019] ATMO 182 (18 December 2019)

Successful opposition by Beckman Coulter to trademark registration of OPEN ACCESS filed on 30 August 2017 for various diagnostic goods in classes 1, 5, 9 and 10 .

The opponent relied on its prior use and registration of the trade marks ACCESS and ACCESS 2 for similar laboratory diagnostic goods and prevailed under the s60 reputation ground.

 

Sandalford Wines Pty Ltd v Saford Wines Pty Ltd [2019] ATMO 183 (20 December 2019)

Unsuccessful oppositions by Sandalford Wines to trademark registration of SAFORD ( word and stylised) filed on 21 December 2017 for goods and services in classes 32, 33 and 35.

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

The opponent relied on its prior use and registration of its SANDALFORD and SANDALFORD 1840 trade marks for wines.

The s44 ground failed because the delegate did not consider the applied for SAFORD marks to be substantially identical with or deceptively similar to SANDALFORD.

Given the delegate’s finding on substantial identity, the s58 ownership ground also failed.

Under s60, the delegate was satisfied the opponent’s SANDALFORD mark had acquired a sufficient Australian reputation, but considered confusion was unlikely given the differences in the respective marks.

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.

 

Tarte, Inc v The Boots Company PLC [2019] ATMO 184 (20 December 2019)

The opponent, Tarte, successfully objected to an application for an extension of time to file evidence in answer by the applicant.

The applicant filed its evidence in time, but a confidential annexure was missing and a later attempt to correct this resulted in further confusion. The extension was filed before filing of the evidence and the applicant subsequently sought to rely on the extension to allow time to correct these errors.

An extension is only available under Regulation 5.15 where the applicant has made all reasonable efforts to comply with all relevant filing requirements and despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so.

This Regulation is construed strictly and the delegate was not satisfied the applicant had exercised the requisite diligence.