Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – December 2020

Litigation Manage Pty Ltd [2020] ATMO 184 (1 December 2020)

The applicant successfully challenged revocation of acceptance of its application for trademark registration of reddebtor (stylised) filed on 29 April 2020 for various business information and debt collection services in classes 35 and 36.

The attorneys for Red Energy Pty Ltd alerted the Registrar to their client’s prior trademark registration for the word mark RED which resulted in IP Australia indicating it intended to revoke acceptance of the reddebtor (stylised) mark.

The delegate noted the Examiner’s search disclosed the RED registration (and an earlier application for RED filed by Virgin Enterprises Limited) and considered the Examiner was not manifestly wrong in accepting the reddebtor application. There had merely been a change of opinion and it was not reasonable to revoke acceptance. Red Energy Pty Ltd had already opposed registration of the reddebtor application and that opposition is proceeding.

Linked Business Concepts Pty Ltd v Thomas International Ltd [2020] ATMO 185 (1 December 2020)

Unsuccessful opposition by Linked Business Concepts to trademark registration of 360 (stylised – with an arrow forming the numeral ‘0’) filed on 20 May 2015 for various services in classes 35 and 44.

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

The opponent primarily relied upon its prior registration and use of word and logo versions of its 360 PM mark.

The delegate did not consider the applied for mark to be substantially identical with or deceptively similar to the opponent’s registered marks and so the s44 and s58 grounds failed.

The s60 ground failed because the delegate considered the evidence relied upon by the opponent did not establish the requisite Australian reputation derived from use of its 360 PM marks. Given this finding, the s42(b) ground also failed.

There was no evidence to support the s62A bad faith ground.

Cybersecure Pty Ltd [2020] ATMO 186 (4 December 2020)

The Applicant was unable to overcome an objection based on insufficient distinctiveness of its CYBERSECURE trade mark filed on 12 November 2019 for various goods and services in classes 9, 38 and 42.

The delegate agreed with the Examiner that CYBERSECURE was not to any extent inherently adapted to distinguish and so s41(3) was applicable. The evidence of use relied upon did not establish the acquisition of factual distinctiveness through use prior to the filing date.

Agha Juice Sydney Road Pty Ltd and Muhammad Hussain v Zahra 15 Pty Ltd [2020] ATMO 187 (8 December 2020)

Unsuccessful opposition by Agha Juice and Hussain to trade mark registration of AGHA JUICE HOUSE filed on 8 February 2018 for milk shakes in class 29 and juices in class 32.

The opponents relied on grounds of opposition under ss 58 and 60 but failed to establish either ground. The delegate was quite critical of a significant portion of the opponent’s evidence.

Under the s58 ground, the opponents asserted prior use based ontheir juice business in Brunswick, Victoria trading under the name Agha Juice Bar with a Logo containing the words Agha Juice Sydney Road. The evidence supported use of Agha Juice Sydney Road, but the delegate did not consider the applied for mark to be substantially identical.

The evidence relied upon by the opponent under the s60 ground was insufficient to establish a requisite Australian reputation. It operated a single store which had been trading for a mere 4 months prior to filing of the applied for mark.

Icon Health & Fitness Inc v Fit Revolution Pty Ltd [2020] ATMO 188 (10 December 2020)

Unsuccessful opposition by Icon Health & Fitness to trademark registration of FIT NUTRITION ( Stylised) as shown below filed on 3 May 2018 for various goods and services in classes 9, 35 and 43.

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

The opponent essentially relied on its prior registration and use of its IFIT trade mark.

The s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to IFIT.

Under s60, the delegate was willing to accept the opponent’s IFIT trade mark had acquired an Australian reputation but, given the differences between the respective marks, confusion was unlikely. Given this finding, the s42(b) ground also failed.

Cohga Pty Ltd v Google LLC [2020] ATMO 189 (10 December 2020)

Unsuccessful oppositions by Cohga to applications for removal of its trademark registrations for WEAVE BUSINESS INTEGRATION FRAMEWORK (Stylised) alleging no good faith use in relation to the registered goods for the 3 years period ending on 16 July 2018.

The trademark registrations dated from 27 June 2011 and covered various software in class 9.

The opponent relied on use of the WEAVE word mark and other marks, but they were all quite different to the registered marks or did not conclusively establish use in relation to the relevant registered goods. The delegate also considered reliance on evidence showing images indexed from the Internet Archive Wayback Machine facility was unreliable and, in any event, were not from an Australian website.

The delegate was not prepared to exercise discretion to leave the mark on the Register.

Segator Pty Limited v FKS Australia Pty Limited [2020] ATMO 190 (11 December 2020)

Successful opposition by Segator to trademark registration of PAGOTO Logo shown below filed on 15 June 2017 for various ice cream related goods in class 30.

The opponent prevailed under the s41 distinctiveness ground.

There was an endorsement indicating PAGOTO is a Greek word meaning congealed ice in English.

Reference was made to an earlier unreported decision refusing registration of the applicant’s word mark ‘pagoto gelato & waffle house’ for insufficient distinctiveness. In that case, the applicant indicated the Greek word PAGOTO means ice cream.

The delegate noted the words in the applied for mark were descriptive individually and in combination. While the device element contributed to the overall distinctiveness, the delegate considered this was devalued by the re-positioning and relative dominance of the word PAGOTO. As such, the composite mark fell under s41(4) and the applicant did not rely on any supporting evidence of use.

Clarendon Lawyers Pty Ltd v Cornwalls Lawyers Pty Ltd [2020] ATMO 192 (15 December 2020)

Partly successful oppositions by Clarendon Lawyers to various applications to register trade marks with a stylised letter ‘C’ alone and in combination with the word ‘Cornwalls’ filed on 7 November 2018 for various services in classes 35, 36, 41 and 45.

There were various representations of the letter ‘C’, one of which is shown below:

The opponent prevailed under the s44 ground by relying on its prior registration for its stylised ‘C’ mark shown below:

The delegate noted the respective marks each contain a series of partially concentric circles forming the letter ‘C’ and were deceptively similar.

The opponent also had a registration for its stylised letter ‘C’ in combination with the words ‘clarendon LAWYERS’.

However, the delegate considered the applied for marks with the addition of the word ‘Cornwalls’ were sufficiently different and unlikely to be confused with the opponent’s marks.

The opponent could not establish any other ground based on use of its marks or bad faith to prevent registration of the applicant’s marks containing the word ‘Cornwalls’.

Internet Services Australia 1 Pty Ltd [2020] ATMO 193 (15 December 2020)

The applicant was able to overcome an objection raised during examination of its application for trademark registration of LOCALE (Stylised) filed on 24 January 2019 for various goods in classes 14, 18 and 25.

The Examiner raised an objection under s44 based on a prior trademark registration for LOCAL LUXE in class 25.

The delegate agreed with the applicant that the applied for LOCALE (Stylised) mark was not deceptively similar to LOCAL LUXE.

Iconic Hotels Group Pty Ltd v Geocon Distributions Pty Ltd [2020] ATMO 194 (15 December 2020)

Unsuccessful opposition by Iconic Hotels to trademark registration of ICONIC HOTELS Logo shown below filed on 23 May 2018 for property management services in class 36.

The opponent relied on grounds of opposition under ss 58 and 60 but failed to establish either ground.

The opponent relied on prior use of various marks containing Iconic Hotels Group, but its evidence primarily related to its Adelphi Hotel in Melbourne.  While its Adelphi Hotel had acquired reputation, the evidence was insufficient to establish reputation in Iconic Hotels Group (which was mainly used as a name) and so the s60 ground failed.

The s58 ownership ground failed because the opponent’s use of Iconic Hotels Group was in relation to hotel and restaurant services which were different to the applied for property management services.

Pablo Enterprise Pte Ltd v FreshFood Holdings Pte Limited [2020] ATMO 195 (17 December 2020)

Unsuccessful opposition by Freshfood Holdings to an application for removal of its trademark registration for PABLO alleging no good faith use in relation to the registered goods for the 3 years period ending on 25 September 2017.

The trademark registration dated from 25 October 1961 and covered coffee in class 30.

The opponent relied on residual reputation and an export sale, made on 23 July 2019, of 500kg of coffee to Papua New Guinea.

The delegate was not satisfied the opponent had establish any use of the PABLO mark for coffee during the relevant 3 years period. The export sale showed use of the mark applied to the shipper container and not coffee.

Given the paucity of evidence, the delegate was not prepared to exercise discretion to leave the PABLO mark on the Register.

The decision is under appeal.

Advance Magazine Publishers Inc v Shanghai Xingdu Garments Co Ltd [2020] ATMO 196 (18 December 2020)

Successful opposition by Advance Magazine Publishers to trademark registration of the composite mark shown below filed on 5 March 2018 for various apparel in class 25.

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

The delegate considered the font chosen for the major portion of the applied for mark has conceptual similarity to that of the VOGUE Masthead that would trigger a consumer to think of the VOGUE brand generally. Further, the wording ‘Original Vogue & Value’ could reassure the consumer to think that although VOGUE is not directly spelled out, the goods are sourced from the ‘original’ VOGUE. Alternatively, consumers would ignore ‘original’ and ‘value’ as being descriptive terms surrounding a VOGUE mark.

Ziggy T Pty Ltd v The Ritz Carlton Hotel Company LLC [2020] ATMO 197 (18 December 2020)

Partly successful opposition by Ziggy T to an application for removal of its trademark registration for RITZ alleging no good faith use in relation to the registered services for the 3 years period ending on 3 November 2018.

The trademark registration dated from 21 November 2013 and covered various entertainment related services in class 41.

Much of the opponent’s evidence related to activity before the relevant period, but there was sufficient evidence to show authorised use of the RITZ mark during the relevant period for some of the registered services related to leasing venues, booking talent and promoting music and dance party events.

When considering the exercise of discretion, the delegate noted that “making too fastidious a distinction between services would be detrimental to the opponent and to consumers who may in the future then face the potential of confusion when faced with the same or similar trade marks on similar or related goods and services” and referred to McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481.

The delegate restricted the specification of the RITZ registration using general language which summed up the opponent’s activity.

Energy Beverages LLC v Cantarella Bros Pty Limited [2020] ATMO 198 (21 December 2020)

Unsuccessful opposition by Energy Beverages to an application for removal of its trademark registration for MOTHERLAND alleging no good faith use in relation to the registered goods for the 3 years period ending on 12 January 2019.

The trademark registration dated from 11 February 2010 and covered energy drinks and other non-alcoholic beverage related products in class 32.

Th evidence disclose use of the MOTHERLAND mark at least during 2010 and 2011 by the opponent’s predecessor in business, but the bulk of the evidence during the relevant period relates to use of the MOTHER mark.

The delegate considered the ability to access, during the relevant period, a historical advertisement or promotional video could not be relied upon to show use of the mark during the relevant period. The WICKED case was distinguished on the basis that the opponent had not offered, and a consumer could not purchase, relevant goods bearing the MOTHERLAND trade mark during the relevant period.

The extensive use and reputation of the MOTHER mark could not be relied upon, as part of the exercise of discretion, to justify leaving the MOTHERLAND mark on the Register.

The decision is under appeal.

Domino’s Pizza Enterprises Limited [2020] ATMO 199 (23 December 2020)

The applicant was unable to overcome all objections raised during examination of its application for trademark registration of DOM filed on 20 September 2018 for autonomous delivery related goods in classes 9 and 12.

The objections were raised under s44 based on a prior registrations for DOM (Stylised) and ‘Is DOM, is Good’ covering similar class 9 goods and under s41 based on DOM being an acronym for ‘disk on a module’ and ‘distributed order management’.

The delegate considered the amendments proposed by the applicant to delete hardware and just retain software were sufficient to overcome the s44 objections.

With regard to s41, the delegate considered the objection based on DOM being an acronym for ‘disk on a module’ was no longer relevant given the amendments to the class 9 specification. However, the objection based on DOM being an acronym for ‘distributed order management’ was appropriate and, even for the amended class 9 goods, DOM was not to any extent inherently adapted to distinguish and s41(3) was applicable.

The applicant subsequently filed a divisional application for the class 9 goods which enabled the application to proceed in class 12.

Advance Magazine Publishers Inc v Paul Rigo [2020] ATMO 200 (23 December 2020)

Unsuccessful opposition by Advance Magazine Publishers to trademark registration of VOGUE filed on 18 April 2017 for various goods in class 11.

The opponent relied on grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A but failed to establish any ground.

The opponent primarily relied on its prior registrations and Australian reputation derived from use of its well known VOGUE mark for fashion, beauty and home furnishings and design publications and related sponsorships. However, the delegate was not satisfied there would be a likelihood of confusion.