Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – February 2020

Odyssey VR (Virtual Reality) Pty Ltd v Samsung Electronics Co., Ltd. [2020] ATMO 15 (5 February 2020)

Unsuccessful opposition by Odyssey VR to trademark registration of SAMSUNG ODYSSEY NOTEBOOK Logo shown below filed on 13 July 2017 for various computer goods for games in class 9.

Trademark-Registration-Samsung-Odyssey-Notebook-Logo

The opponent relied on grounds of opposition under ss 44, 59 and 62A, but failed to establish any ground.

Under s44, the opponent relied on its prior registration for Odyssey VR (Virtual Reality) which covered virtual reality headsets in class 9 and IT services in class 42. The delegate considered ‘monitors for games’ claimed by the applicant were similar goods to virtual reality headsets, but it was not necessary to reach a final decision on that because the delegate did not consider the applied for mark to be deceptively similar to the opponent’s registered mark. The delegate gave weight to the presence of SAMSUNG and evidence showing the word ODYSSEY was popular in class 9 registered marks related to gaming.

The s59 ground failed because the opponent’s evidence was insufficient to convince the delegate that the opponent did not have the requisite intention to use the applied for mark.

The s62A bad faith ground also failed.

 

Caterpillar Inc. v Sayvest Pty Ltd [2020] ATMO 16 (5 February 2020)

Partly successful oppositions by Caterpillar to trademark registration of IRONCAT and IRONCAT TYRES Logo shown below filed on 30 June 2016 for various tyres in class 12 and related services in classes 35 and 37.

Trademark-Registration-Ironcat-Tyres-Logo

The opponent relied on grounds of opposition under ss 42(b), 44 and 60.

The opponent prevailed in its opposition to the IRONCAT word mark under ss 44 and 60, but failed in its opposition to the logo mark.

Essentially, the opponent relied on its prior registered CAT marks and Australian reputation derived from use of the CAT mark.

Under the s44 ground, the delegate considered the applied for IRONCAT mark was deceptively similar to the opponent’s prior registrations for CAT which covered similar goods and services. However, the delegate found the applied for logo mark was unlikely to be confused with CAT because the idea of a tiger and the word IRONCAT are likely to be retained by the relevant consumer.

Under the s60 ground, the delegate was satisfied the opponent’s CAT word mark had acquired a significant Australian reputation at least in relation to large machinery and other vehicles, as well as the servicing and spare parts of those goods. The delegate went on to find that use of the applied for IRONCAT word mark would be likely to cause confusion. However, the differences between CAT and the applied for logo mark reduced the risk of confusion and so the s60 ground was not established for the logo mark.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for logo 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.

 

Annco, Inc. v Nike Innovate C.V. [2020] ATMO 17 (7 February 2020)

This involved an unsuccessful attempt to amend a Statement of Grounds and Particulars (SGP) in an opposition to trademark registration of AEROLOFT filed on 20 September 2017 for various apparel in class 25.

The applicant’s evidence included an article dated September 2013 referring to the applied for mark and the opponent relied on this to assert that the applicant was intending to rely on prior continuous use under s44(4). The opponent sought to add s58A as a ground of opposition to counter this. However, the request to amend the SGP was made some 3 months after receiving the applicant’s evidence and the opponent failed to provide a full and frank explanation for the delay; so the amendment was refused.

 

Amazon Technologies Inc [2020] ATMO 18 (10 February 2020)

An application for trademark registration of WOOD PAPER COMPANY filed on 17 April 2018 for various bags in class 18 and apparel in class 25 was refused based on insufficient distinctiveness.

During examination, an objection was raised that various types and bags and clothing  can be made from wood or paper and so the applied for mark was descriptive of such goods.

The delegate considered “the ordinary signification of WOOD PAPER COMPANY in Australia to persons who will purchase, consume or trade in clothing and/or bags is that of a company that produces wood and paper based products and the use of the phrase in connection with clothing and/or bags is a direct reference to the nature and quality of these goods.” As such, the applied for mark was not inherently adapted to distinguish and fell within s41(4). The applicant did not rely on any supporting evidence and little weight could be given to acceptance of this mark in the UK, EU and US.

 

Hilton Worldwide Holding LLP [2020] ATMO 20 (13 February 2020)

The applicant was unable to overcome a distinctiveness objection initially raised against its divisional application for trademark registration of TAPESTRY with a priority date of 8 February 2017 for various entertainment, health club and exhibition services in class 41.

The examiner contended ‘tapestry” indicates exhibitions related to tapestries. The delegate agreed that the ordinary signification of this word is to indicate the subject matter of the relevant exhibition services. Little weight was given to the applicant’s registrations for this mark in other countries.

The applicant was obliged to amend its specification to enable withdrawal of the objection.

 

Cocktails & Canvas Asset Corp Pty Ltd v Cork & Chroma Pty Ltd [2020] ATMO 21 (17 February 2020)

Unsuccessful oppositions by Cocktails & Canvas to trademark registration of three marks containing or consisting of CORK & CHROMA filed on 25 January 2017 for various services in class 41.

The opponent relied on grounds of opposition under ss 41 and 60, but failed to establish either ground.

The opponent did not file any evidence in support after being refused an extension to do so. It did file some evidence in reply to the applicant’s evidence in answer.

The applicant commenced trading in 2013 and operates an art studio where participants may optionally consume liquor. The opponent operates a directly competing business, initially under the PAINT AND SIP trade mark in March 2013 and under the CORK AND CANVAS trade mark from August 2016.

The s41 ground failed as the delegate found that neither ‘cork’ nor ‘chroma’ are in any way descriptive of the applicant’s services.

The s60 ground also failed as the delegate was not satisfied the evidence filed by the opponent established that it had acquired a reputation in Australia in either the CORK & CANVAS or PAINT AND SIP trade marks.

 

Brightflash USA LLC [2020] ATMO 22 (17 February 2020)

The applicant was able to overcome a distinctiveness objection initially raised against its divisional application for trademark registration of IWATCH with a priority date of 3 June 2013 which was subsequently restricted to global positioning system (GPS) goods in class 9.

This first divisional application also included a claim to various computer goods which were the subject of a s41 objection raised by the Examiner. The applicant filed a further divisional application for those computer goods and the s41 objection was no longer applicable to the remaining goods which were GPS goods. The delegate was satisfied that IWATCH is inherently adapted to distinguish such GPS goods.

 

Aussie Water Coolers Pty Ltd v Lee Bradley [2020] ATMO 23 (18 February 2020)

Partly successful opposition by Aussie Water Coolers to an application for removal of its trademark registration for Awesome Water alleging non-use during the 3 years period ending on 10 October 2017.

The registration dated from 28 September 2012 and covered water coolers in class 11 as well as various advertising and business services in class 35

The opponent filed invoices showing the registered mark, including one dated 4 February 2015, which satisfied the delegate that it had made goods faith commercial use of the registered mark for water coolers. However, no use was established for the class 35 services and the delegate was not prepared to exercise discretion. Consequently, the registration was restricted to the class 11 goods.

 

Hungry Spirit Pty Ltd as Trustee for The Hungry Spirit Trust v Fit n Fast Australia Pty Limited [2020] ATMO 24 (18 February 2020)

Partly successful opposition by Hungry Spirit to an application for removal of its trademark registration for MOVE alleging non-use during the 3 years period ending on 28 April 2018.

The registration dated from 30 May 2008 and covered various training related goods and services in classes 9, 16 and 41.

The opponent was able to establish use of the registered MOVE mark by its authorised user, Move 4 Life Pty Ltd under license with payment of royalties for some of the registered goods and services. However, the delegate was willing to also exercise discretion by selecting a general description of the used goods and, rather than maintaining the registration for its broad claim for all adult training services.

The end result was that the opponent’s MOVE registration was limited to goods and services in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace.

 

Paramount International Export, Ltd. v Campbell Woskett as Trustee for the Agvesta Trust. [2020] ATMO 25 (19 February 2020)

Unsuccessful opposition by Paramount International Export to trade mark registration of FIJI FRESH filed on 13 December 2017 for various goods in classes 3, 4, 29, 30 and 32.

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

The opponent was primarily concerned with the class 32 claim and based its opposition on use and registration of its FIJI trade mark for water. The opponent does not own any trademark registration for the word FIJI, rather its registrations are for composite/label marks containing FIJI in a prominent position.

The applicant amended its class 32 specification to exclude mineral and aerated waters, but the opponent was not satisfied with this.

The s44 ground failed because the delegate did not consider the applied for FIJI FRESH trade mark to be deceptively similar to any of the opponent’s registered marks. The delegate noted that the word FIJI has no inherently distinctive value as it is a country name where bottled water and many other goods may originate. As such there is nothing to create a monopoly simply in that country name.

Under s60, the delegate observed the evidence relied upon by the opponent showed little use of the word mark FIJI, rather the opponent’s reputation resided in this word combined with other fanciful matter and descriptive words shown on the product labelling. The delegate concluded that “any confusion or deception would not be the result the Opponent’s reputation but instead, its adoption of a name incapable of functioning as a unique indicium of trade source”.

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

 

Southcorp Brands Pty Ltd v BIN-VIN(Shanghai)Trading Co., Ltd. [2020] ATMO 27 (24 February 2020)

Successful opposition by Southcorp to trademark registration of MAISON RICH filed on 27 June 2017 for various alcoholic beverages in class 33.

The opponent prevailed under the s62A bad faith ground.

The applicant did not file any evidence or take part in the hearing. It is part of a group of companies engaged in behavior in China and Australia involving the misappropriation of the opponent’s marks, particularly connected with its well known Penfolds brand.

The opponent owns the trade mark MAISON DE GRAND ESPRIT and contended the applied for mark simply reproduces the word MAISON and combines it with the word RICH which is the second word from the translation of the Chinese character version of the Penfolds mark.

The delegate agreed with the opponent and concluded: “In the absence of any alternative explanation of the Applicant’s conduct I consider that the application to register the Trade Mark was part of a pattern of conduct by the Applicant Group in both seeking to register trade marks and engaging in broader conduct with the aim of passing itself off and misappropriate the goodwill of the Opponent (and in particular the goodwill the Opponent has in its Penfolds brand and related products).”

 

Kapruka Pty Ltd v Kapruka LLC [2020] ATMO 28 (25 February 2020)

Successful opposition by Kapruka Pty Ltd to trademark registration of KAPRUKA filed on 30 September 2017 for money transfer services in class 36.

The opponent prevailed under the s58 ownership ground. It is an Australian company incorporated in 1999 and provides money remittance services to Sri Lanka.

The applicant is a US company with Dulith Herath as its founder, sole shareholder and sole director. It commenced business in 2001 and provides money transfer services to customers throughout the world including in Australia. It asserted use of the KAPRUKA trade mark since at least 2002, but the evidence did not corroborate this.

The delegate accepted the following advertisement published in May 2004 in The Indian Voice (which is a community newspaper for the Indian community in Melbourne) as constituting trade mark use of Kapruka Pty Ltd by the opponent.

Trademark-Registration-Kapruka-Advertisement

This Australian use was sufficient to defeat the applicant’s claim to ownership of the KAPRUKA mark.

 

Austin John Watson ATF Watson Family Trust v Cosmetic Warriors Ltd [2020] ATMO 29 (26 February 2020)

Unsuccessful opposition Watson to an application for removal of his trademark registration for LUSH alleging non-use during the 3 years period ending on 22 April 2018.

The registration dated from 26 July 1993 and covered clothing, footwear and headgear in class 25.

The opponent asserted use of the LUSH mark during the relevant period for clothing sold through his retail outlets in Surfers Paradise, Queensland. His evidence included copies of three invoices, associated bills of lading, packaging declarations and packing lists sent by an Indian supplier. He highlighted the cartons which he said contained the garments bearing the ‘Lush’ label and attached 5 photographs of 3 garments with a ‘Lush’ label. Mr Watson said the opponent’s point of sales system is ‘not sophisticated’, he did not barcode items and he had no documents linking sales to garments, only general sales records.

The delegate was critical of the opponent’s evidence. It did not show whether the cartons reached Australia. It was unclear where or when the photographs were taken and there was nothing to indicate the relevant goods were offered for sale in Australia by, or with the authority of, the opponent. As such, this evidence was of insufficient probative weight to corroborate the opponent’s assertions of trade mark use of LUSH.

The delegate then considered whether discretion could be exercised to leave the LUSH mark on the Register, but declined to do so and directed the trade mark registration to be removed.

 

Jagen Pty Ltd v Index Fund Advisors Pty Ltd [2020] ATMO 30 (28 February 2020)

Unsuccessful opposition by Jagen to an application for removal of its trademark registration for SCIENTIA CAPITAL alleging non-use during the 3 years period ending on 14 October 2017.

The registration dated from 2 August 2005 and covered financial services in class 36.

The opponent asserted the SCIENTIA CAPITAL trade mark had been used in the relevant period by Scientia Capital Pty Ltd (which was equally owned by Jagen Nominees Pty Ltd and Montoya Pty Ltd( in relation to a life sciences fund. The evidence referred to a single instance of use, namely a Powerpoint presentation dated 31 August 2017 showing the SCIENTIA CAPITAL mark with a graphic device. However, the delegate was not satisfied the evidence established convincing proof this use of the registered mark was by the registered owner or under its control.

Neither party made any submissions on discretion and the delegate was not satisfied it was reasonable to exercise any discretion and directed the SCIENTIA CAPITAL trade mark to be removed from the Register.

 

Coffee Republic Australia Pty Ltd v Espresso Republic, LLC [2020] ATMO 31 (28 February 2020)

Successful opposition by Coffee Republic to trademark registration of ESPRESSO REPUBLIC Logo shown below filed on 30 June 2017 for coffee and tea in class 30.

Trademark-Registration-Coffee-Espresso-Logo

The opponent prevailed under the s44 ground by relying on its prior registrations in class 35 for COFFEE REPUBLIC word and logo shown below

Trademark-Registration-Coffee-Republic-Logo

The applicant was unable to establish prior continuous use under s44(4).