Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – February 2019

Jason Davidson v Daisy Holding Company Pty Ltd [2019] ATMO 13 (1 February 2019)

Largely unsuccessful opposition by Davidson to an application for removal of his trademark registration for Figjam Logo alleging non-use during the 3 years period ending 29 August 2016 for any of the registered goods or services in classes 29, 30, 32, 33, 41 and 43.

Much of the opponent’s evidence was not dated and of little probative weight. The evidence did support use of the registered mark for the provision of food and drink services (catering) in class 43, but not for any goods or class 41 services. The evidence relied upon to support use for class 32 goods also showed use of a mark which was materially different to the registered mark. The delegate was not satisfied the opponent’s evidence justified a favourable exercise of discretion and directed the registered mark be removed from the Register for all goods and services except those in class 43.

 

Marcel Lema v Fondo Pty Ltd [2019] ATMO 14 (1 February 2019)

Unsuccessful opposition by Lema to an application for removal of his trademark registration for GRAN FONDO Logo alleging non-use during the 3 years period ending 1 February 2017 for any of the registered goods or services in classes 25 or 41.

The opponent’s evidence did not conclusively show use of the registered mark. Some material was undated, while other material referred to the opponent’s as an advocate for cycling, but did not show use of the registered mark in the course of trade.  The business name registration for GRANFONDO and company registration for Granfondo Pty Ltd, without more, could not be relied upon. Also, invoices from Granfondo Pty Ltd were insufficient. The delegate was not satisfied the opponent’s evidence justified a favourable exercise of discretion and directed the registered mark be removed from the Register.

 

United States Polo Association v Polo Enterprises Holdings Pty Ltd [2019] ATMO 15 (5 February 2019)

Unsuccessful opposition by USPA to trademark registration of the composite mark shown below filed on 13 September 2016 in classes 25, 35 and 41.

Trademark-registration-UPA-Logo

The opponent relied on use and registration of its various marks including the USPA and U.S. POLO ASSOCIATION word marks and the Device mark shown below:

 

Trademark-registration-polo-players-logo

The s44 ground of opposition was based on the opponent’s registered USPA word mark, but the delegate did not consider the applied for mark to be deceptively similar to it.

Under the s60 ground, the opponent primarily relied on use of a composite Logo mark containing USPA with the Device shown above. However, the delegate was critical of the opponent’s evidence, particularly as it was unclear as to the identification of the trade marks actually relied upon as having acquired an Australian reputation. However, even allowing for a modest reputation arising from use of the composite Logo mark, the delegate was not satisfied as to the likelihood of confusion.

Given the finding on the s60 ground, the s42(b) contrary to law ground based on the Australian Consumer Law also failed.

 

Mint (Aust) Pty Ltd v Intuit Inc [2019] ATMO 16 (5 February 2019)

Unsuccessful opposition by Mint to trademark registration of MINT.COM filed on 2 August 2010 in classes 9, 35, 36 and 42.

The facts were the same as in the earlier opposition reported in the October 2018 ATMO Decisions at Mint Payments Ltd v Intuit Inc where the opposition failed and the delegate upheld the applicant’s request to dismiss this later opposition.

 

Hunter Water Corporation [2019] ATMO 17 (6 February 2019)

An application for trademark registration of Hunter Water filed on 19 February 2016 in classes 37, 39, 40, 41 and 42 was refused based on non-distinctiveness.

The delegate considered the words Hunter Water were not to any extent inherently adapted to distinguish the relevant services and the evidence relied upon was insufficient to show the acquisition of distinctiveness through use for more than 20 years.

The delegate was critical of the evidence, particularly as it disclosed use of various logo marks, rather than the plain words and the use of the plain words tended to reflect use of the applicant’s trading name rather than trade mark use.

 

ALDI Foods Pty Ltd v Alda Communication Training Company LLC [2019] ATMO 18 (6 February 2019)

Unsuccessful opposition by ALDI Foods to trademark registration of ALDA COMMUNICATION TRAINING COMPANY filed on 16 December 2016 for various educational and training services inclass 41.

The opponent relied on its prior defensive registration for ALDI covering similar class 41 services, but the s44 ground failed. The delegate did not consider the applied for mark was deceptively similar to ALDI.

 

Apple Inc v Swatch AG [2019] ATMO 19 (8 February 2019)

Unsuccessful opposition by Apple to trademark registration of SWATCH ONE MORE THING and ONE MORE THING filed on 22 May 2015 for goods in classes 9 and 14.

The opponent failed to establish any of the grounds of opposition under ss 42(b), 58, 59, 60 or 62A.

The opponent relied on use of “one more thing’ in keynote addresses by  senior officers (including Steve Jobs), but the delegate did not characterise this as trade mark use.

 

Mark Warren v Steam Vac Cleaning Systems Pty Ltd [2019] ATMO 20 (8 February 2019)

Unsuccessful opposition by Warren to trademark registration of AUSTRALIAN MADE ANOTHER QUIET ACHIEVER Logo filed on 2 May 2016 for carpet cleaning machines in class 7.

The opponent did not file any evidence and could not establish any ground of opposition under ss58, 60 or 62A.

 

Jim Beam Brands Co v Christine and Donald Crowden [2019] ATMO 21 (9 February 2019)

Successful opposition by Jim Beam Brands to trademark registration of the composite mark shown below filed on 13 April 2015 for various transport services in class 39

Trademark-Registration-Dial-A-Driver-Logo

The applicants were self-represented and did not file any evidence or participate in the hearing.

The opponent relied on the Australian reputation of its red and gold rosette used as part of its Jim Beam branding and sponsorship of motor sports, an example of which is shown below.

Trademark-Registration-Jim-Beam-Logo-Colour

The applicants’ website and Facebook page showed images of a motor vehicle sponsored by the opponent and bearing the Jim Beam Logo together with a vehicle bearing the applied for mark.

The opponent was upheld under the s42(b) contrary to law ground. The delegate noted that the relevant conduct for consideration in this context is the applicants’ use of the applied for mark in relation to the relevant services. The test is forward looking and is concerned with the likelihood of misleading or deception and what would occur if this mark is used in respect of the services. However, in considering the notional use of the mark, the actual use to which it has been put is also relevant as it can be regarded “as illustrative of what would be normal and fair”. The delegate considered the applicants’ conduct strongly suggest that they have deliberately cultivated a perception by consumers that there is an affiliation or association between their services and the opponent which does not and did not exist. Consequently, there is a real likelihood a significant number of consumers would be misled or deceived and in contravention of s18 of the Australian Consumer Law.

 

Trident Seafoods Corporation v Trident Foods Pty Limited [2019] ATMO 22 (12 February 2019)

Unsuccessful opposition by Trident Seafoods Corporation to trademark registration of the device mark shown below filed on 5 October 2016 for various foodstuffs in classes 29 and 30.

Trademark-Registration-Trident-Logo

Under the s44 ground, the opponent relied on its prior registration for the composite mark shown below for various class 29 goods

Trademark-Registration-Trident-Seafoods-Logo

However, the delegate did not consider the applied for mark was deceptively similar to this registered mark. The applied for mark could, in the absence of a shaft, be seen as a three-pronged fork or three arrows in a semi-circular pattern or a stylised crown. There are no words in the mark to give context to the device and it is not obviously a trident. The ambiguity of this device coupled with the opponent’s registered mark being comprised of various elements resulted in the respective marks being sufficiently visually and conceptually different when considered as wholes.

The s59 ground sought to be added by the opponent also failed for lack of evidence establishing a prima facie case that the applicant did not have an intention to use the applied for mark.

 

Parmalat Australia Pty Ltd v The a2 Milk Company Limited [2019] ATMO 23 (13 February 2019)

Unsuccessful opposition by Parmalat to trademark registration of the composite A2 Milk Logo shown below filed on 6 July 2016 for goods and services in classes 5, 29, 30 and 44.

Trademark-Registration-A2-Milk-Logo

The opponent could not establish either ground of opposition under s42(b) or s43 which were directed only to the goods in classes 29 and 30.

Under the s42(b) contrary to law ground, the opponent unsuccessfully argued the inclusion of the word “verification” in the applied for mark conveys various misleading representations as to independent verification and is contrary to the Australian Consumer Law.

Under the s43 ground, the opponent unsuccessfully argued the  word “verification” in the applied for mark connotes independent verification which would be likely to deceive or cause confusion.

 

Julie Tarte v Snowflake Designs Inc [2019] ATMO 24 (14 February 2019)

Tarte was refused an extension to file evidence in support of her opposition to an application for removal of her trademark registration for SNOWFLAKE in class 25 on the ground of non-use.

The withdrawal of Tarte’s legal representative four days prior to the evidence deadline was not exceptional circumstances. Insufficient evidence was provided as to the circumstances surrounding withdrawal of representation.

 

Associated Kiln Driers Pty Ltd v Hyne & Son Pty Ltd [2019] ATMO 25 (22 February 2019)

Unsuccessful opposition by Associated Kiln Driers to trademark registration of T2 filed on 20 November 2015 for timber building product in class 19.

The opponent argued that T2 lacks sufficient distinctiveness because H2 is used in connection with termite resistant timber classification and the letter “T” is used to indicate “termites” and/or in connection with the name of chemicals used to protect timber from termites. The terms H2 and T2 are used interchangeably to refer to termite treated timber.

The applicant contended it had coined the term T2 for use in relation to hazard class 2 of H2 timbers and had been using this term as a trade mark since 2003.

The delegate was not satisfied that T2 had an ordinary meaning in connection with termite treated timber. Further, the term H2 is available for those in the same trade to use to indicate their similarly treated timber.

 

Deyncourt Pty Ltd v Scott Mitchell Passmore as trustee for The S R G Passmore Investment Trust [2019] ATMO 26 (25 February 2019)

Unsuccessful opposition by Deyncourt to trade mark registration of the composite THE KIMBERLEY RUM COMPANY Logo shown below filed on 13 April 2016 for alcoholic beverages in class 33.

Trademark-Registration-Kimberley-Rum-Logo

The opponent failed to establish any ground of opposition under ss 41, 43, 61 or 62A.

The delegate considered this composite mark to be sufficiently distinctive and merely alludes to the Kimberley region in the sense of suggesting that the goods on which the applied for mark is used are spirituous liquors made by some people who call themselves “The Kimberley Rum Company”, and makes no claim as to the geographic origin of the relevant goods as being sourced from the  Kimberley region of Western Australia.

The s61 ground failed because the opponent did not file evidence to establish that Kimberley is a geographical indication within the meaning of the Trade Marks Act, namely a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

Under the s62 A bad faith ground, the opponent argued the applied for mark is designed to mislead purchasers into believing that the product is derived from the Kimberley region which is clearly not the case and the product as sold is not a rum product. The delegate considered this to be a recapitulation of the ground under s43 and was not established.

 

Surfers Burgers Limited [2019] ATMO 27 (26 February 2019)

An application for trademark registration of Surfers’ Burgers filed on 27 October 2016 for food and beverage related services in class 43 was refused.

The applicant was unable to overcome an objection that this mark was not capable of distinguishing due to the geographical significance of “Surfers”, being than name given to the Gold Coast suburb of Surfers Paradise in Queensland. This objection was upheld notwithstanding that this word may also refer to someone who surfs either at the beach or on the internet. The applicant’s evidence as to intended use of this mark was insufficient to overcome this objection.

 

Blinc Inc v SKNCompany Pty Ltd [2019] ATMO 28 (27 February 2019)

Successful opposition by Blinc to trademark registration of PINC SKINCARE REVITALISE & HYDRATE Logo as shown below filed on 24 January 2017 for various goods skin care and other goods in classes 3 and 5

Trademark-Registration-Pinc-Skincare-Logo

The opposition was upheld under s44 with the delegate being satisfied the applied for mark was deceptively similar to a prior registration for PINQ owned by another party and covering similar class 3 goods.

 

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