Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – February 2022

Duncan Farquhar v Kristy Hobson [2022] ATMO 14 (2 February 2022)

Unsuccessful opposition by Farquhar to trademark registration of EcoConnect filed on 3 August 2020 for various education related services in class 41.

The opponent relied on grounds of opposition under ss 43, 44, 58, 58A, 59, 60 and 62A, but failed to establish any ground.

The opponent was primarily relying on its identical mark registered for various scientific and environmental services in class 42. The evidence relied upon failed to corroborate claimed use since 2000.

The applicant had been conducting her business since October 2017 in the field of environmental education and waste, recycling and sustainability consulting.

The s44 ground failed because the delegate did not consider the applicant’ services to be similar to the services covered by the opponent’s registration.

The opponent’s evidence was insufficient to establish any of the other grounds.

Yupoong, Inc v John Brauman [2022] ATMO 15 (4 February 2022)

Unsuccessful opposition by Yupoong to trademark registration of the FLEXIFIT Logo mark shown below filed on 18 August 2020 for various exercise and fitness goods in class 28.

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

The opponent primarily relied on registration and use of the FLEXIFIT trade mark. The registration covered various apparel in class 25, but the mark had been used since 2002 to sell blank caps to which customers may affix their own logo.

Under s 44, the delegate considered the applied for mark to be deceptively similar to the opponent’s registered FLEXIFIT mark, but the relevant class 28 goods were not similar to apparel in class 25.

The s58A ground was inapplicable because the applied for mark was not accepted under the s44(4) prior continuous provision.

The s60 ground failed because the delegate was not satisfied as to the likelihood of confusion.

Yupoong, Inc v John Brauman [2022] ATMO 16 (4 February 2022)

Successful opposition by Yupoong to trademark registration of the FLEXIFIT Logo mark shown below filed on 1 September 2020 for various clothing and exercise wear in class 25.

The opponent prevailed under the s44 ground by relying on its prior trade mark registration for FLEXIFIT covering similar goods in class 25.

Engage Insurance Services Pty Ltd [2022] ATMO 17 (7 February 2022)

The applicant was unable to overcome an objection raised during examination of its application for trademark registration of NAKED Logo shown below filed on 11 October 2021 for various insurance services in class 36.

This application encountered a s44 objection based on a prior registration for NAKED HOME LOANS covering mortgage related services including mortgage loan insurance and other mortgage insurance services in class 36.

The applicant was interested in strata insurance, but even a restriction to its services to that field was not enough to avoid confusion. The delegate considered the respective marks were deceptively similar and strata insurance was similar to mortgage insurance.

Julie Martin v Three Capes Lodge Walk Pty Ltd [2022] ATMO 18 (8 February 2022)

Successful opposition by Martin to trademark registration of THREE CAPES LODGE WALK Logo shown below filed on 30 November 2016 for walking excursions and treks as well as other tours and travel related services in class 39.

The opponent prevailed under the s44 ground by relying on her prior trademark registration for “three capes eco lodge” covering, inter-alia, sightseeing and tourism information services in class 39.

The delegate considered the respective marks to be deceptively similar and for similar services.

Bilyara Vineyards Pty Ltd v Group Huge Limited [2022] ATMO 19 (9 February 2022)

Successful opposition by Bilyara Vineyards to trademark registration of Eagle Hill Logo shown below filed on 27 August 2019 for wine in class 33.

The opponent prevailed under the s44 ground by relying on its prior registration for the device mark shown below covering similar goods in class 33.

The delegate considered the words EAGLE HILL would be seen as a regional location by Australian consumers and are not a transformative addition (but it is unclear whether there was evidence to support this). The Eagle device element would speak to a consumer’s sense of sight and make an emotional connection. The respective Eagle devices were quite similar giving rise to a finding of deceptive similarity.

Take-Two Interactive Software, Inc v Take Two App Pty Ltd [2022] ATMO 20 (14 February 2022)

Partly successful opposition by Take-Two Interactive Software to trade mark registration of the Logo mark shown below filed on 9 August 2017 for software with personal development applications in class 9 as well as cards and stationery in class 16.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its TAKE TWO trade marks in relation to game software, but only to the extent that the applicant’s downloadable software applications for personal development programs include software applications in the nature of games, or for entertainment purposes.

The applicant was permitted to amend its class 9 goods to “downloadable software applications for personal development programs namely software for generating motivational texts to improve relationships”.

The other grounds under ss 42(b), 44, 58 and 62A were not established.

Young Engineering Pty Ltd v Vokes Limited [2022] ATMO 21 (15 February 2022)

Successful opposition by Young Engineering to an application for removal of its VOKES VEE-GLASS trademark registration alleging non-use during the 3 years period ending on 12 October 2013.

The registration dated from 13 February 1968 and covered filtering material and apparatus made of bonded glass filaments in class 11.

Much of the opponent’s evidence related to use of the VOKES trade mark, but this was not directly relevant to the present matter because that mark was not substantially identical with the registered mark.

At the relevant date, Laminar Air Flow Pty Ltd was the registered owner of the mark, so the use of this mark needed to be by that company or an user authorised by it. The delegate was satisfied that use by a related entity, Vokes Air Filtration Pty Ltd was authorised by the registered owner because those entities operated with unity of purpose.

Despite reliability issues with the evidence relied upon, the delegate was satisfied that the clear impression provided by the evidence taken as a whole (and on the balance of probabilities) is that Laminar did use the registered mark for the registered goods in the relevant period.

Clear Aligner Excellence Pty Ltd [2022] ATMO 22 (15 February 2022)

The applicant was unable to overcome a distinctiveness objection raised during examination of its application for trade mark registration of Clear Aligner Excellence filed on 1 May 2020 for printed matter in class 16, education and training in orthodontics and dentistry in class 41 and orthodontic and dental services in class 44.

The Examiner contended that ordinary significance of the applied for mark is that the claimed goods and services involve or feature clear aligners which are of excellent quality or are provided with excellence.

The delegate largely agreed and considered the ordinary signification of ‘Clear Aligner Excellence’ in the context of dental and orthodontic services is that the services involve the provision of clear aligner treatment of a superior quality and there is a  likelihood of other traders having a legitimate desire to use this mark.

The Hospital Research Foundation Incorporated v St John Ambulance Australia South Australia Inc [2022] ATMO 23 (15 February 2022)

Unsuccessful opposition by The Hospital Research Foundation to trademark registration of CHRISTMAS HOME LOTTERY Logo shown below filed on 11 September 2019 for lottery tickets in class 28 and lottery services in class 41.

The opponent relied on grounds of opposition under ss 41 and 43, but failed to establish either ground.

The opponent also owned a prior registration for HOSPITAL RESEARCH HOME LOTTERY Logo covering lottery services and had used this mark since 2004 as its major fund-raising venture. However, it did not rely on s44 or s60 as grounds of opposition.

The s41 ground failed because the applied for mark, in its entirety, was considered sufficiently distinctive. Even though the words CHRISTMAS HOME LOTTERY describe a lottery run at or around the Christmas period, for which a home is the prize, the total combination and arrangement of elements is not something other traders would honestly desire to use in relation to their own goods or services.

Under s43, it is necessary to establish that because of some connotation that the applied for mark or a sign contained in that mark, the use of it in relation to the relevant goods or services would be likely to deceive or cause confusion. The opponent relied on the reputation of its mark, but that is irrelevant to s43 which is directed to a connotation in the mark itself, not from any comparison with another mark. The opponent also alleged that the applied for mark conveys a misleading connotation because it indicates a lottery only and lacks detail about the purpose of the lottery being for fundraising. However, the delegate was unconvinced that the absence an indication that the applicant’s services relate to fundraising activities conveys anything misleading about the relevant goods and services. It is a difficult proposition to demonstrate that a connotation arises solely from the absence of material in a mark. 

Rajesh Yadali v Prana Living LLC [2022] ATMO 24 (15 February 2022)

Unsuccessful opposition by Rajesh Yadali to an application for removal of his PRANA NATURA trademark registration alleging non-use during the 3 years period ending on 24 September 2019.

The registration dated from 16 December 2013 and covered retail and distribution services in class 35.

The evidence disclosed use of a composite mark, but it contained additions which substantially affected the identity of the PRANA NATURA word mark. There was use of these words on an invoice and bank statements relating to transactions involving food or rice products. The invoice included the domain name prananatura.com.au, but the composite mark was also prominently displayed.

The opponent’s evidence failed to show how it conducted business via its Facebook page or website as platforms to sell goods online. Also, the opponent’s evidence related to its own rice products and there was no evidence of engaging in retail or distribution of the goods of others.

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

Jianda Xu v Jaunt Group Limited [2022] ATMO 25 (16 February 2022)

Partly successful opposition by Jianda Xu to trademark registration of DIVEPRO filed on 26 March 2019 for various lighting in class 11 excluding for diving or for use in the water.

The opponent prevailed under the s44 ground by relying on a prior registration for DivePRO (Stylised) covering breathing and diving equipment in class 9 as well as wet suits and other apparel in class 25.

The delegate considered this ground had been made out in respect of the applicant’s claim to certain lighting notwithstanding the exclusion of lighting for diving or for use in the water.

The applicant was permitted to amend its goods to “bicycle lights; automobile lights; lighting installations for air vehicles; but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water”.

The other grounds under ss 58A and 60 were not established.

Pirelli Tyre S.p.A v Rodin Cars Limited [2022] ATMO 26 (18 February 2022)

Partly successful opposition by Pirelli to trademark registration of FZERO filed on 23 May 2019 for various goods and services in classes 7, 12, 37, 40, 41 and 42.

The opponent prevailed under the s44 ground by relying on its prior registrations for trade marks containing or consisting of ZERO. The delegate considered the applied for FZERO mark was deceptively similar to the opponent’s PZERO, P ZERO and ZERO registered marks which covered goods in classes 12, 16, 18 and 25. However, only the applicant’s claims to tyres in class 12 and tyre repair and wheel repair services in class 37 involved similar goods or closely related services.

The other grounds under ss 42(b) and 60 were not established. The opponent’s PZERO mark had acquired an Australian reputation under s60 for tyres, but this only gave rise to confusion in the context of the applicant’s claims to tyres and wheels in class 12 and services in relation to tyres and wheels in class 37.

The applicant was permitted to amend its application to remove all references to tyres and wheels in classes 12 and 37 and to apply the exclusion statement: ‘all of the foregoing excluding tyres and wheels, and components, parts and accessories for tyres and wheels’ to class 12 and ‘all the foregoing excluding services in relation to tyres and wheels, and components, parts and accessories for tyres and wheels’ to class 37. 

Ludo Studio Pty Ltd [2022] ATMO 27 (21 February 2022)

The applicant was partly successful in overcoming  various s44 objections raised during examination of its application for trade mark registration of BLUEY filed on 11 November 2020 (but was a divisional application with a priority date of 12 March 2019) for various goods and services in classes 5, 9, 18, 25, 29 and 30.

The s44 objections were based on prior marks containing or consisting of BLUEY. Most of these were overcome by consent letters, but two objections remained based on a prior composite mark containing BLUEY BEEMAN in classes 30, 35 and 44 as well as prior stylised BLUEY mark in class 5.

The delegate considered the applied for BLUEY mark was not deceptively similar to the prior BLUEY BEEMAN composite mark; so that objection was withdrawn. However, the objection based on the prior  stylised BLUEY mark was maintained and the delegate considered baby diapers to be similar to incontinence pads. As a result, the applicant was obliged to delete the claim to class 5 goods from its application.

Hatton Holdings (Vic) Pty Ltd as trustee for the Hatton Holdings (Vic) Trust v Knead (Holding) SAL [2022] ATMO 28 (25 February 2022)

Unsuccessful opposition by Hatton to trademark registration of the composite mark shown below filed on 13 February 2018 for various goods and services in classes 29, 30, 35, 41 and 43

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

The term Zaatar is a thyme based spice mix used in Middle Eastern cuisine.

Under s44 the opponent relied on a prior registration for the composite mark shown below in classes 30 and 43.

However, the delegate considered the respective marks were not deceptively similar.

Under s60, the opponent relied on use of this registered mark and the stylised ZAATAR mark since 2009 for a café/restaurant, bakery and food wholesaling business which it acquired in March 2015. This was directed to a restaurant in Coburg, Victoria. The delegate considered any reputation to be limited and was not satisfied as to a likelihood of confusion, particularly given the differences in the respective marks and the descriptive significance of Zaatar.

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.