Trade Mark News & Information

Trademark Registration Sydney -ATMO Decisions – February 2021

Jamie Smith, Oliver Sim and Romy Croft v Coen Rodgers [2021] ATMO 9 (3 February 2021)

Unsuccessful opposition by Smith, Sim and Croft to trademark registration of the logo mark shown below filed on 31 January 2018 for various eyewear in class 9 and apparel in class 25.

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

The opponents essentially relied on their use of trade marks ‘the XX’, ‘XX’ and ‘X’ in plain text and stylised forms from 2005 in relation to their music albums and live music performances as well as merchandise. The applied for mark has been used with the applicant’s RIXX EYEWEAR brand from 2016.

Under s60, the delegate was satisfied the opponents’ marks had acquired an Australian reputation, but this was limited to the music industry. Given the differences in the respective goods and trade marks, the delegate was not satisfied as to the likelihood of confusion.

The opponents also relied on their reputation under s42(b) to allege that use of the applied for 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.

The s58 ownership ground failed because the delegate did not consider the applied for mark to be substantially identical with any of the opponents’ marks. The opponents also relied on the applicant’s own evidence to cast doubt as to whether the applicant was the owner, or whether the applied for mark was owned jointly or by a related company. However, there was uncertainty and the opponents had not discharged their evidentiary onus.

Under s62, the opponents argued the applicant falsely represented he was the owner of the applied for mark. However, given the delegate’s finding under s58, this ground also failed.

Alexandros Christou v Withiell Investments Pty Ltd [2021] ATMO 10 (4 February 2021)

Unsuccessful oppositions by Christou to trademark registration of Orchid Excellence and Orchid Excellence Fertiliser filed on 19 June and 18 September 2018 for fertilisers in class 1.

The opponent relied only on the s62A bad faith ground but failed to establish this.

The applicant developed an orchid fertiliser and subsequently entered into an arrangement with the opponent to market this product to a wider audience. The brand chosen was Orchid Excellence; although there was disagreement as to who coined this. The opponent registered Orchid Excellence Fertiliser as a business name on October 2016.This arrangement continued for about 3 years until the opponent started selling a fertiliser made by another party under the same brand.

The delegate considered, by filing the trademark applications, the applicant had merely sought to protect its legitimate interests. The arrangement between the parties was vague. The opponent had not done enough to discharge the onus of satisfying the delegate as to bad faith.

Kevin Robinson v Little Wings Limited [2021] ATMO 11 (18 February 2021)

Unsuccessful opposition by Robinson to an application for removal of his LITTLE WINGS Logo trademark registration alleging no good faith intention to use and no use up to 15 April 2018.

The registration dated from 23 May 2017 and covered air transport services in class 39 as well as cultural and sporting related charitable services in class 41.

The opponent originally had some business relationship with the applicant which acrimoniously ended in 2015 and then subsequently set up a different charitable organisation.

There was some use of the registered mark during the relevant period but, on the evidence, the delegate considered this use was not by the opponent. The delegate considered that whatever involvement the opponent had in the creation and subsequent use of the registered mark was undertaken in his capacity as a director of the applicant.

The opponent’s evidence included a statement that he had an intention to use the registered mark and this statement was sufficient to shift the onus on to the applicant to establish the lack of such an intention. The delegate agreed with the applicant that the opponent’s conduct after terminating his business relationship with the applicant was inconsistent with the stated intention. Rather, the filing was to disrupt the applicant and not driven by commercial purposes. Significantly the opponent’s evidence did not address the evidence relied upon by the applicant as supporting the absence of a relevant intention.

Carabella Holdings Pty Ltd v Conset Investments Pty Ltd [2021] ATMO 12 (22 February 2021)

Successful opposition by Carabella to trademark registration of THE PARAGON filed on 20 February 2018 for various chocolate products in class 30.

The opponent prevailed under the s58 ownership ground.

The opponent is the successor in title to the Katoomba café business which has traded under various names containing PARAGON from 1909. The applicant is the owner of the building from which this business is conducted.

The delegate was satisfied the evidence disclosed first use of THE PARAGON trade mark for chocolate goods in the mid-1920s and devolution in title to this trade mark to the opponent. Hence the applicant was not the owner.

Vina Concha y Toro S.A v Gregory Hall [2021] ATMO 13 (24 February 2021)

Unsuccessful opposition by Vina Conchato trademark registration of OCHO TORO filed on 22 October 2017 for various alcoholic beverages.

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

Under s44 the opponent relied on its prior registrations for trade marks containing or consisting of CONCHA Y TORO, but the delegate did not consider the applied for OCHO TORO mark to be deceptively similar to any of them.

Under s60 the opponent relied on its use of its CONCHA Y TORO mark for wine in Chile since 1957 and in Australia since 2009. The evidence disclosed this mark being used as a house mark with other trade marks for particular wines types. Despite some deficiencies in the evidence, the delegate was satisfied the opponent’s CONCHA Y TORO trade mark had acquired a relevant Australian reputation as at the 22 October 2017 filing date. However, given the differences in the respective marks, the delegate was not satisfied as to the likelihood of confusion.

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

L’Oreal v Lore Perfumery Pty Ltd [2021] ATMO 14 (24 February 2021)

Unsuccessful oppositions by L’Oreal to trademark registration of LORE and LORE PERFUMERY (Stylised) filed on 11 October 2018 for various personal care products including perfumery in class 3.

The opponent relied on grounds of opposition under ss 44 and 60 but failed to establish either ground.

The applicant owned a trademark registration for LORE PERFUMERY dating from 7 April 2017 and had been selling fragrances and cosmetic products under the LORE and LORE PERFUMERY marks since May 2017.

Under s44 the opponent relied on its prior trademark registration for L’OREAL, but the delegate did not consider the applied for marks to be deceptively similar to L’OREAL.

Under s60 the opponent relied on its use of its well known L’OREAL mark since the 1960s and the delegate was satisfied this mark had acquired a substantial Australian reputation as at the 11 October 2018 filing date. However, the delegate considered the strength of the reputation of the L’OREAL trade mark in respect of cosmetic goods weighed against the likelihood of confusion with the applied for marks in respect of the same goods.

Brickfields Consulting Pty Ltd v Andrew Hoyne Design Pty Ltd [2021] ATMO 15 (26 February 2021)

Successful opposition by Brickfields to trademark registration of PLACE VISIONING filed on 6 October 2017 for various design services in class 42.

The opponent prevailed under the s41 distinctiveness ground.

The delegate considered the applied for mark is not to any extent inherently adapted to distinguish the relevant services. Indeed, the applicant’s evidence conceded “place vision” to be a term commonly used in the property marketing, placemaking and branding or urban planning industries to describe a high-level outcome delivered by service providers. The applicant’s pre-filing evidence of use was insufficient to demonstrate the acquisition of distinctiveness.

Happy Skincare ATF Breckell Family Trust v Happy Slom Co Pty Ltd [2021] ATMO 16 (26 February 2021)

Successful opposition by Happy Skincare to trademark registration of HAPPYSKINCO Logo shown below filed on 12 October 2018 for various personal care products in class 3 and electrical hair removal devices in class 8.

After the hearing, the applicant requested class 3 be deleted from its application.

The opponent prevailed under the s44 ground relying on its prior registration for happy SKINCARE Logo shown below covering a broad range of beauty, body and skin care products in class 3.

The delegate considered the applied for mark to be deceptively similar to this registered mark. Significantly, the delegate also considered the applicant’s class 8 hair removal devices to be similar goods to those class 3 goods covered by the opponent’s registration. Hence, the application was refused in its entirety.

Muller et Cie v Arlec Australia Pty Ltd. [2021] ATMO 17 (26 February 2021)

Unsuccessful opposition by Muller to an application for removal of its AIRELEC trademark registration alleging no good faith use during the 3 years period ending on 30 April 2019.

The registration dated from 10 October 2008 and covered heating related goods in classes 9 and 11.

The opponent relied on historical Australian use of the AIRELEC mark between 2001 – 2007 and in 2011, as well as continuing Australian reputation. However, there was no good faith use of this mark during the relevant period.

The delegate declined to exercise discretion and directed the AIRELEC trade mark be removed from the Register.