Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – January 2020

Verge Design Ltd v Romani Clothing Co ATF the Dionyssiou Family Trust [2020] ATMO 1 (10 January 2020)

Successful opposition by Verge Design to trademark registration of VERGE GIRL filed on 22 December 2017 for various eyewear in class 9, jewellery in class 14, bags and leather goods in class 18, apparel in class 25, and retail services in class 35.

The VERGE GIRL application was accepted under the honest concurrent use provision and hence the applicant was able to overcome s44 objections based on the opponent’s prior VERGE trademark registrations in classes 9 and 25.

The opponent prevailed under the s60 ground by relying on its Australian reputation derived from use of its VERGE trade mark since July 1998 for women’s clothing.

The delegate concluded: “ Given the strong reputation of the Opponent’s marks in Australian fashion generally, their substantial similarity to the Trade Mark, the strong nexus between the respective Goods and Services, their use in the same markets and trade channels and examples of actual confusion having already occurred, I am satisfied that a consumer with an imperfect recollection of those marks, on seeing the Trade Mark used on similar goods and services, might be confused or caused to wonder whether VERGE GIRL is a brand extension or otherwise associated with the Opponent.”

 

Murley Pty Ltd v The Craft & Co Pty Ltd [2020] ATMO 2 (13 January 2020)

Unsuccessful oppositions by Murley to trademark registration of THE CRAFT & CO Kitchen Bar ( word and Logo versions) filed on 19 January 2018 for food and beverage related services in class 43.

The applicant owned a trademark registration for THE CRAFT & Co Logo dating from 5 June 2015 which also covered similar services. It operates hospitality businesses in Melbourne under the names ‘the Craft & Co Collingwood’ and ‘the Craft & Co Farm’ from December 2015 and April 2016 respectively.

The opponent operates a hospitality business in Eltham, Victoria under the business name ‘Craft Kitchen and Bar’. It relied on use of this name as a trade mark since December 2017.

The opponent relied on grounds of opposition under ss 41, 42(b), 43, 44, 58, 60 and 62A, but failed to establish any ground.

The delegate considered the applied for marks were sufficiently distinctive and so the s41 ground failed.

The applicant successfully obtained removal of a trademark registration for CRAFT in class 43 owned by another party on the ground of non-use, thus thwarting the opponent’s s44 ground of opposition.

The s58 ownership ground failed because the delegate did not consider either of the applied for marks to be substantially identical with the opponent’s Craft Kitchen & Bar mark.

The s60 ground failed because the opponent could only rely on some two month’s use of its Craft Kitchen & Bar mark prior the filing dates of the opposed marks and the delegate considered this was insufficient to establish the requisite reputation.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for marks 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 s43 ground failed as there was no connotation in the applied for marks likely to deceive or cause confusion.

The s62A bad faith ground also failed. The opponent issued a cease and desist letter to the applicant just before it filed its trade mark applications, but the delegate considered a mere awareness of the opponent’s mark did not give rise to the applications being filed in bad faith, particularly as the applicant owned a prior registration for a similar mark.

 

Flow Systems Pty Ltd v Progressive Green Pty Ltd [2020] ATMO 3 (13 January 2020)

Unsuccessful opposition by Flow Systems to trademark registration of FLOW POWER filed on 6 March 2017 for electrical energy goods in class 4

The opponent relied on grounds of opposition under ss 42(b), 58, 59 and 60, but failed to establish any ground.

The opponent primarily relied on its use of FLOW and FLOW SYSTEMS, particularly for the provision of private energy and water utility infrastructure and services to off-grid and strata communities from 2014.

The applicant was an electricity retailer which offers wholesale market access within the National Energy Market. It had used the applied for FLOW POWER mark since March 2017.

The s58 ownership ground failed. The delegate gave weight to evidence filed by the applicant and concluded the water utility and energy services industry is a separate market to the electricity market. Hence the goods provided under the opponent’s marks could not be characterised as the same kind of thing as the applicant’s goods.

Under s59, the opponent argued the applicant is a wholesale electricity power provider and does not produce the underlying goods (electricity). However, this was insufficient to shift the onus on to the applicant to establish it had the requisite intention to use the applied for FLOW POWER mark for the claimed goods.

The s60 reputation ground failed because the delegate was not satisfied the opponent’s marks had acquired a sufficient reputation among actual or potential consumers of electricity.

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.

 

Intel Corporation a Delaware Corporation [2020] ATMO 4 (13 January 2020)

An application for trademark registration of INTEL FALCON filed on 24 March 2017 for various goods in classes 9 and 12 primarily directed to drones and unmanned vehicles was refused.

The applicant was unable to overcome a s44 objection based on prior registrations for FALCON covering similar goods, particularly in class 12. The inclusion of INTEL was not sufficient to avoid deceptive similarity.

 

Jolita Pty Ltd v Joanne Elizabeth Shepherd [2020] ATMO 5 (14 January 2020)

Unsuccessful opposition by Jolita to trademark registration of Mummactiv Logo shown below filed on 20 February 2017 for various clothing in class 25

Trademark-Registration-MummActiv-Logo

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

In particular, the opponent relied on its prior registration for the device mark shown below and use of this device mark by itself and with its MAMMOJO house mark for activewear for pregnant women and nursing mothers since February 2016

Trademark-Registration-Jolita-Device

The applicant operates a business trading under the MummActiv name since April 2016.

The s44 ground failed because the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to the opponent’s device mark.

The s58A ground could not apply because the applied for mark was not accepted under s44(4).

The s60 ground failed because the delegate considered the opponent’s evidence did not establish the requisite reputation and, even if it did, the significant differences in the respective marks went against any likelihood of confusion.

 

CARBAR HOLDINGS PTY LTD v Shenzhen Fengduzhihui Vehicle Lamps Co., Ltd. [2020] ATMO 8 (23 January 2020)

Unsuccessful opposition by Carbar Holdings to trademark registration of CARBAR filed on 11 April 2017 for various lights for vehicle in class 11.

The opponent relied on grounds of opposition under ss 41, 42(b), 43, 58, 59, 60 and 62A but failed to establish any ground.

Neither party filed any evidence or submissions.

Given that the opponent did not file any evidence, it could only rely on its Statement of Grounds and Particulars. The delegate immediately dismissed the grounds under ss 42(b), 43, 58, 59, 60 and 62A for lack of supporting evidence. The only ground considered was based on lack of distinctiveness under s41 but, rather curiously, the opponent framed this in terms of similarity with its prior marks which was irrelevant to the s41 ground.

 

Southcorp Brands Pty Ltd v Shanghai Benka Wines Co., Ltd [2020] ATMO 9 (29 January 2020)

Successful opposition by Southcorp to trademark registration of Perfumen (stylised) shown below filed on 6 June 2017 for various alcoholic beverages in class 33.

Trademark-Registration-Perfumen

The opponent prevailed under the s62A bad faith ground.

This case is another instance of a pattern of behavior involving wrongful appropriation of key elements of the opponent’s branding, particularly the Penfolds (script) mark shown below:

Trademark-Registration-Penfolds

The applicant did not file any evidence and the delegate accepted the evidence of the opponent in upholding the bad faith ground.

 

ACER Incorporated v PBX Holdings LLC [2020] ATMO 10 (29 January 2020)

Successful opposition by Acer to applications for removal of its PACKARD BELL word and logo trademark registrations alleging non-use during the 3 years period ending on 1 January 2018.

The registrations covered various audio and video equipment and computer goods in class 9.

There was no use of these marks during the relevant period, but the delegate exercised discretion in favour of leaving these marks on the Register.

It is worth noting the delegate referred to the High Court judgement in E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15 in finding that second hand goods offered on a secondary market such as eBay no longer remain “in the course of trade” and cannot be relied upon to prove use of the relevant trade marks.

Nonetheless, earlier overseas use, as well as the secondary market for second hand goods and use of the packardbell.com.au domain name to refer viewers to other websites outside of Australia all contributed to a residual reputation in Australia which could potentially lead to confusion if another party was to use the PACKARD BELL trade mark and the delegate concluded it is not in the public interest to remove the trade mark registrations.

 

Ramsay Health Care Investments Pty Limited. [2020] ATMO 11 (30 January 2020)

The applicant was successful in overcoming a distinctiveness objection initially raised against its application for trademark registration of RAMSAY PHARMACY filed on 17 August 2016 for various pharmacy and related retailing services in classes 35 and 44.

During examination, an objection was raised based on the surnominal significance of the word RAMSAY (which occurs 2854 times as an Australian surname) and this word also being geographical place names in Queensland and South Australia.

The delegate quickly dismissed the objection based on geographical significance as the relevant references were to a place in Queensland with a population of a mere 310 people and RAMSAY also being the name of an electorate in South Australia comprising several suburbs.

The delegate agreed the s41(4) distinctiveness objection based on surname significance was appropriate and considered RAMSAY PHARMACY is, to some extent, but not sufficiently adapted to distinguish the relevant services. To overcome this objection the applicant filed supporting evidence showing use of the applied for mark since 2013/4 in some 40 dispensaries within private hospitals owned by the applicant. Having regard to this evidence, the delegate was satisfied that the applied for mark had sufficient capacity to distinguish and qualify for registration.

 

Luxottica Group SpA v Anthony Ghosen and Tiger Vision Pty Ltd [2020] ATMO 12 (31 January 2020)

Unsuccessful opposition by Luxottica to trademark registration of ROGUE EYEWEAR filed on 23 February 2017 for eyewear in class 9.

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

No evidence was filed, so the opposition came down to s44 where the opponent relied on its prior registration for a composite mark containing VOGUE (which it owned jointly with Les Publications Conde Nast SA) covering similar class 9 goods. However, the delegate did not consider the applied for ROGUE EYEWEAR mark to be deceptively similar to this registered mark.

The s42(b) ground was based on the reputation of the VOGUE mark but, without evidence to support this, the delegate dismissed this ground.

 

MBIP Nominees Pty Ltd as trustee for the Mecca Brands IP Unit Trust v Meeka Pty Ltd [2020] ATMO 13 (31 January 2020)

Unsuccessful opposition by MBIP to trademark registration of MEEKA Logo shown below filed on 16 December 2015 for various cosmetic and beauty care products in class 3.

Trademark-Registration-Meeka-Logo

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

The opponent did not file any evidence in support, although it did file evidence in answer, parts of which were unsuccessfully challenged by the applicant. In any event, the delegate concluded the ss 58A and 60 grounds were not established and the opponent could only rely on the s44 ground.

Under s44, the opponent relied on its prior registrations for MECCA which covered similar goods. However, the delegate did not consider the applied for mark to be deceptively similar to MECCA.

The Stralia Group Pty Ltd v Roger Alan Roberts Loose [2020] ATMO 14 (31 January 2020)

Successful opposition by The Stralia Group to trademark registration of Awestralia Logo shown below filed on 29 August 2017 for various water and alcohol free beverages in class 32.

Trademark-Registration-Awestralia-Logo

The opponent prevailed under the s44 ground by relying on its prior registration for STRALIA which covered similar goods.

No evidence was filed.

The delegate considered the applied for mark to be deceptively similar to STRALIA and, in doing so, characterised the goods as “inexpensive fast moving consumer goods which are often hurriedly pulled from a refrigerator or shelf in a grocery store, service station, newsagency, café and the like. Furthermore, these goods are commonly sold in bottles and cans and labels are not always visible in their entirety due to the curved surfaces of these containers.”