Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – December 2021

Luma Stiftung v Grande Projects Pty Ltd [2021] ATMO 148 (1 December 2021)

Unsuccessful opposition by Luma Stiftung to trademark registration of The Lume filed on 10 October 2019 for a broad range of entertainment related services in class 41.

The opponent did not file any evidence and could rely only on the s44 ground based on its prior trademark registration for LUMA THEATRE OF LEARNING as well as prior marks of others containing the element “lum”. However, the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to any of these prior marks which covered similar services.

Southern Vintners & Negociants Pty Ltd v Samuel Smith & Son Pty Ltd [2021] ATMO 149 (7 December 2021)

Unsuccessful opposition by Southern Vintners & Negociants to trademark registration of NEGOCIANTS filed on 6 February 2018 for various services in class 35 relating to wine.

The opponent did not file any evidence and relied only on the s41 distinctiveness ground.

The delegate considered NEGOCIANTS is a French word with an ordinary meaning in English of a trader who deals in wine and directly describes the kind and purpose of the relevant services. As such, it is a word which other traders might legitimately desire to use for similar services. It fell within s41(3) as having no inherent adaptation to distinguish.

However, the delegate was satisfied the applicant’s evidence supported use of the applied for mark for over 30 years and it had, in fact, became capable of distinguishing the applied for services.

Veedol International Limited v Veedol Lubricants Pty Ltd [2021] ATMO 150 (7 December 2021)

Unsuccessful opposition by Veedol International to an application for removal of its registration for the trade mark VEEDOL alleging no good faith use in the relevant 3 years period ending 4 June 2019.

The registration dates from 8 March 2011 and covered various lubricants, additives and oils in class 4.

The opponent relied on developing a marketing  plan in February 2016 and the supply of 4 drums of Veedol engine lubricants in December 2019. Both activities were outside of the relevant period. There was some other activity in 2018 and January 2019, but the delegate was not satisfied they amounted to a commercial dealing in the relevant goods, but could be characterised as mere negotiations with a prospective distributor, possibly to ascertain if there was a market in Australia for these goods.

Although the evidence supported the opponent or its predecessors in business have an international reputation, that international profile had not penetrated the Australian market.

The delegate was not prepared to exercise discretion and directed the VEEDOL trade mark to be removed from the Register.

Deckers Outdoor Corporation v GHN Trading Pty Ltd [2021] ATMO 151 (8 December 2021)

Successful opposition by Deckers to trade mark registration of the UGG composite logo mark shown below filed on 1 August 2019 for various Australian made footwear in class 25.

The opponent prevailed under the s44 ground by relying on its prior trademark registration for UGG Logo shown below:

The opponent’s registration covered various clothing and headwear, but the delegate considered clothing and footwear to be similar goods.

The delegate accepted that the word UGG has previously been determined to be descriptive of footwear and the scope of protection afforded to the opponent’s Logo mark must be construed narrowly, but the presence of this word cannot be ignored for the purposes of comparison.

The delegate considered the prominent position and specific manner the word UGG has been presented in the applied for mark elevated the similarity of the respective marks and amplified the potential for confusion.

The delegate concluded the respective marks were deceptively similar and for similar goods. Hence, the s44 ground was established.

Mars Australia Pty Ltd v Marquis Macadamias Ltd [2021] ATMO 152 (8 December 2021)

Partly successful oppositions by Mars to trademark registration of MM (Stylised) and MM MARQUIS (Stylised) as shown below filed on 30 July 2019 for various foodstuffs in classes 29, 30 and 31.

The opposition to the MM (Stylised) mark was upheld under the s44 ground based on deceptive similarity to the opponent’s prior registration for M&M’S covering similar goods.

However, the opposition to the MM MARQUIS (Stylised) mark failed. The delegate considered this mark was not deceptively similar to M&M’S under s44. Although the delegate was satisfied the opponent’s M&M’S mark had acquired a very significant Australian reputation for confectionery, the presence of MARQUIS in the applied for mark created a striking difference between the respective marks which materially reduced the risk of confusion between them. Given this finding, the s42(b) contrary to law ground based on the Australian Consumer Law also failed. The s62A bad faith ground also could not be established.

Stratco Australia Pty Limited [2021] ATMO 153 (13 December 2021)

The applicant was unable to overcome a distinctiveness objection raised against its divisional application for trademark registration of PAVILION filed on 12 August 2019 (but claiming 10 February 2016 as its priority date) for metal pergolas and other various metal building products in class 6.

The delegate agreed with the Examiner that the word “pavilion” has an ordinary meaning to describe structures that are included in, built and constructed from the applied for goods. Further, there was evidence of other traders using the term PAVILIONS for various structures. Hence, the objection under s41(3) was appropriate.

Although the applicant has been using PAVILION since 2014 for patio products, but it was typically used in close combination with STRATCO. This use was insufficient to overcome the objection.

The Polo/Lauren Company L.P. [2021] ATMO 154 (14 December 2021)

The applicant was largely unsuccessful in overcoming a distinctiveness objection raised against its application for trade mark registration of RALPH’S COFFEE filed on 14 May 2018 for various goods and services in classes 21, 25, 30 and 43.

The delegate was prepared to accept the application only for the class 25 goods and refused it for the remaining goods and services.

The objection arose due to the surname significance of RALPH.

Grand River Enterprises Six Nations Ltd v Aphria Inc [2021] ATMO 155 (16 December 2021)

Unsuccessful opposition by Grand River to trademark registration of MOHAWK filed on 13 September 2018 for various cannabis related goods in classes 5, 29, 31 and 34.

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

The opponent’s position was that, although Mohawk has been registered and used as a brand in Australia over the years, it is entirely inappropriate given it is the name of a First Nations people and is a misappropriation of indigenous intellectual property and culture. The opponent is a Native American owned producer of tobacco products and use of the applied for mark is likely to indicate a connection with the opponent or the Mohawk First Nations people.

The delegate was generally critical of the lack of evidence filed by the opponent, particularly to support cultural appropriation.

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

The delegate was also not satisfied the evidence supported the opponent’s contention under s43 that the applied for mark connoted a connection with the Mohawk First Nations people known for their cultivation and production of tobacco products. The delegate accepted that numerous Australians would understand that the word Mohawk refers to the Mohawk people, and that some consumers would also know the origin of the ‘Mohawk’ hairstyle. However, was not satisfied that a significant number of Australians with such knowledge would wonder whether the goods originate from or have some connection with the Mohawk people.

The s60 ground failed because the opponent’s evidence did not establish it had established a reputation in Mohawk as a trade mark. Given this finding, the s42(b) contrary to law ground based on the Australian Consumer Law also failed.

Zero Motorcycles Inc v Benzina Zero Pty Ltd [2021] ATMO 156 (16 December 2021)

Partly successful opposition by Zero Motorcycles Inc to trade mark registration of BENZINO ZERO (Stylised) as shown below filed on 10 December 2019 for various goods in class 12.

The opponent prevailed to a large extent under the s44 ground by relying on its prior trademark registration for ZERO MOTORCYCLES covering electric motorcycles.

The delegate considered the applied for mark to be deceptively similar to ZERO MOTORCYCLES, but was prepared to allow the application to proceed for very limited goods, namely “push scooters (vehicles)”.

Kevin Robinson v Little Wings Limited [2021] ATMO 157 (16 December 2021)

Unsuccessful opposition by Robinson to trademark registration of LITTLE WINGS filed on 25 October 2018 for various charitable services in classes 36 and 44.

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

The applicant provides free flight and ground transport services for sick children.

The opponent was a former employee of the applicant and asserted he developed and owned the name ‘Little Wings’.

The evidence comprised declarations made by professional representatives of the parties and the delegate was critical of the absence of first-hand evidence.

The opponent had previously registered a logo version of the Little Wings mark and that registration was removed following a successful non-use application by the applicant where it was found the opponent did not personally own that mark.

The delegate also considered the opponent was not entitled to ownership of the LITTLE WINGS mark and, against that background, found that none of the grounds of opposition could be sustained.

Uber Technologies, Inc v Uberdoc Pty Ltd [2021] ATMO 158 (16 December 2021)

Unsuccessful opposition by Uber Technologies, Inc to trademark registration of UBERDOC filed on 8 November 2016 for various medical related services in class 44.

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

The opponent essentially relied on its Australian reputation of its UBER and UBER derivative trade marks. The UBER mark was used in Australia from 2012 for its ride sharing software application. Since then, the opponent has used other UBER marks for its ride sharing services and has broadened its offerings to other areas including UBER EATS from January 2016 for food and grocery ordering and delivery.

The opponent has used its UBER HEALTH mark, but not in Australia.

The delegate was satisfied the opponent’s UBER mark had acquired a very strong Australian reputation in respect of an application used to facilitate access to transport and delivery services. While the delegate observed that the opponent engages in brand extension by using UBER as a prefix in a variety of other trade marks, he was not satisfied any of these other UBER marks individually have a strong reputation as at the 8 November 2016 priority date.

The applicant commenced use of the UBERDOC mark on 4 November 2016 in connection with a software application that facilitates an interaction between patients and health care professionals.

Under the s60 reputation ground, the delegated noted that, even considered in the context of the delivery of the applicant’s services via an app, there remains a significant distinction between its various medical and health services and the software associated with the reputation of the opponent’s UBER mark. The delegate concluded: “A consumer encountering health or medical services bearing the Trade Mark, even if facilitated via an app, would not be likely to be confused or deceived as to the origin of those services because of the reputation of the UBER Trade Mark.” Accordingly, the delegate was not satisfied that there would not be a real tangible danger of people being caused to wonder whether a connection exists between the applied for UBERDOC mark and the UBER mark or the opponent’s family of UBER marks.

The opponent also relied on the reputation of its UBER and UBER derivative marks under s42(b) to allege that use of the applied for mark would be contrary to the Australian Consumer Law and/or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

Under the s62A bad faith ground, the Opponent contended that, having regard to the reputation of the UBER mark and its history of using other marks centred around the UBER prefix, the applicant’s conduct in filing the UBERDOC trade mark application falls short of acceptable standards of commercial behaviour. However, the delegate noted that mere awareness of the UBER marks is not a basis for bad faith. Furthermore, given the differences between the applicant’s services and those associated with the opponent, the delegate did not consider the applicant’s decision to apply for registration of the UBERDOC mark to be unreasonable.

It should also be noted the opponent issued requests to the Apple App Store and the Google Play Store to take down the UBERDOC app and the applicant subsequently took steps in or around September 2018 pointing to an intention to rebrand to URBANDOC. However, the delegate was not convinced this post-filing conduct by the applicant pointed to bad faith.

Viceroy Cayman Limited v Anthony Otto Syrowatka [2021] ATMO 159 (21 December 2021)

Successful opposition by Viceroy Cayman to trademark registration of Viceroy filed on 18 September 2018 for various hotel related services in class 43.

The opponent prevailed under the s58 ownership ground.

The opponent has, since 2002, operated hotels and resorts under the Viceroy name in North America, South America, the Caribbean and the Middle East.

The applicant was associated with a family company (PLM) which has, since 2004, operated a hotel and resort in Bali under the name Viceroy.

Both parties relied on promotion of their hotels and resorts in Australia to establish trade mark use of Viceroy in Australia.

However, the use in relation to the Bali hotel and resort was by PLM and the applicant could not rely on ‘unity of purpose’ to establish ownership. The delegate was satisfied that the applicant was not the owner of the applied for mark.

INX Software Pty Ltd [2021] ATMO 160 (22 December 2021)

The applicant was able to overcome an objection raised during examination of its divisional application for trademark registration of INX TMX filed on 10 August 2020 (with a priority date of 9 March 2015) for specific software in class 9.

The examination objection was taken under s44 based on a prior registration for TMX covering software. It was also contended, under s46, that the divisional claim was invalid.

The applicant had filed several divisional applications with the objective of maintaining priority while waiting to see whether the cited TMX registration was renewed.

The divisional objection turned on whether it was made in respect of “some only” of the goods covered by the parent application.

The delegate agreed with the applicant that the divisional application was valid because it deleted “business process and workflow management software” covered in the parent application. This was despite the retention of two rather broad claims, namely, ‘computer programs (downloadable software)’ and ‘computer programs and software sold, rented or distributed on-line’. The delegate considered neither of these claims had a broader scope than the deleted software. 

In the meantime, the cited TMX registration was not renewed and had been removed from the Register. Accordingly, the applied for INX TMX mark could proceed to acceptance.