Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – January 2021

PM-International AG v Jeunesse Global Holdings LLC [2021] ATMO 1 (5 January 2021)

Successful opposition by PM-International to trademark registration of PM ESSENTIALS Logo shown below filed on 12 July 2018 for various dietary and nutritional products in class 5.

The opponent prevailed under the s44 ground by relying on its prior registered mark shown below covering similar class 5 goods:

The delegate considered the applied for mark to be deceptively similar to this registered mark.

QWB Residential [2021] ATMO 2 (8 January 2021)

The applicant was unable to overcome a distinctiveness objection and its application for trademark registration of the Q Logo shown below filed on 30 August 2019 for various property related services was refused.

The delegate agreed with the Examiner that this mark lacked sufficient inherent distinctiveness. The letter “Q” is rendered in a basic and non stylised font, while the design element beneath is a slightly decorative underline which is of non-significant character. Hence, s41(4) was applicable. The applied for mark had been used since November 2019 in connection with the promotion of the Queen’s Wharf residential precinct in Brisbane which is currently under construction. Further, when used, this mark was used in conjunction with the words QUEEN’S WHARF RESIDENCES. The evidence of use relied upon by the applicant was insufficient to overcome the distinctiveness objection.

Beckman Coulter Inc v Gen-Probe Incorporated [2021] ATMO 3 (15 January 2021)

Beckman Coulter was unable to prevent Gen-Probe’s application for non-use proceedings to be referred to the Federal Court.

Beckman Coulter was successful before the Registrar in its opposition to trademark registration by Gen-Probe of OPEN ACCESS filed on 30 August 2017 for various diagnostic goods in classes 1 ,5, 9 and 10. Beckman Coulter prevailed under the s60 ground by relying on the reputation acquired from use of its ACCESS trade mark for similar laboratory diagnostic goods.

Gen-Probe appealed this decision to the Federal Court and also, after some delay, filed applications for removal of Beckman-Coulter’s ACCESS trade mark registrations on the ground of non-use. Gen-Probe then applied to have the removal proceedings referred to the Federal Court to be resolved with its appeal.

One line of argument by Beckman Coulter concerned the point of law that s92 non-use removal applications operated prospectively and would not impact upon the s44 ground of opposition. In proceedings before the Registrar, the outcome of a later filed s92 removal application is typically taken into account under s44. This is notwithstanding the Federal Court has decided that a removal application takes effect from the date of an order for removal. However, the Federal Court has not squarely decided the interplay between s44 and s92.

In any event, the delegate considered it was appropriate to exercise discretion and refer the removal applications to the Federal Court. In reaching this decision, the delegate concluded: “I am not satisfied that either party will be relevantly disadvantaged by the referral. Conversely I consider the inevitable additional time and costs involved in retaining the removal applications for decision by the Registrar, the relevance of the removal applications to the appeal and the significant point of law that this consideration entails, are factors which outweigh concerns raised by the Opponent’s objection.”

Uber Geeks Pty Ltd v Uber Technologies Inc [2021] ATMO 4 (18 January 2021)

Partly successful opposition by Uber Geeks to applications for removal of its Uber Geeks (Stylised) trademark registration alleging non-use during the 3 years period ending on 13 November 2018.

The registration dated from 23 May 2007 and covered various computer related services in classes 37, 41 and 42.

The delegate was satisfied there had been use of the registered mark during the relevant period sufficient to maintain the registration for class 37 services.

Institut National de lOrigine et de la Qualite v Bizko Pty Ltd (as trustee for the Bizko Unit Trust) [2021] ATMO 5 (21 January 2021)

Partly successful opposition by Institut to trademark registration of CHATEAU ROQUEHORT filed on 30 July 2018 for various goods in classes 29, 30, 32 and 33.

The opponent has responsibility for protecting the Roquefort appellation of origin for cheese and prevailed under the s43 ground, namely, that because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The delegate agreed with the opponent that the words Roquehort and Roquefort are likely to be confused and that the presence of the word Chateau reinforces a connection with France. Further, the connotation of Roquefort / Roquehort is that of cheese coming from France.

The applicant offered to exclude blue cheese made from sheep’s milk from its class 29 specification, but the delegate considered this did not go far enough. Rather, the delegate directed the class 29 specification be amended by removing all claims to dairy products, dairy produce and cheese.

Forbo Financial Services AG v Europol Pty Ltd [2021] ATMO 6 (22 January 2021)

Unsuccessful oppositions by Forbo to trademark registration of EUROPOL (word and logo versions) filed on 27 July 2018 for various coatings in classes 1 and 2.

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

The opponent essentially relied on Australian use since 1961 of its EUROCOL mark for a range of flooring products. The applicant’s EUROPOL mark has been used in Australia since February 2019 for polyurethane based coatings for flooring.

The s58 ownership ground failed because the delegate did not consider the applied for marks to be substantially identical with EUROCOL.

The s60 ground failed because the opponent’s evidence did not demonstrate the recognition and esteem required to show a significant or substantial Australian reputation in its EUROCOL mark.

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.

Development Center for Teaching Chinese as A Foreign Language of The Ministry of Education P.R.C v Fashion One (Oceania) Pty Ltd [2021] ATMO 7 (22 January 2021)

Successful opposition by Development Center to an application for removal of its HSK (Stylised) trademark registration alleging non-use during the 3 years period ending on 29 October 2018.

The registration dated from 3 June 2004 and covered educational examination services in class 41.

The applicant did not file any evidence or participate in the hearing.

The opponent’s evidence demonstrated use of the registered mark during the relevant period in relation to China’s national standardised test designed and developed to assess Chinese language proficiency of non-native speakers of the Chinese language.

Action Smart Group IP Pty Ltd [2021] ATMO 8 (28 January 2021)

The applicant was unable to overcome a distinctiveness objection and its application for trademark registration of CARAVAN FIX filed on 15 January 2019 for various services in classes 35 and 37 was refused.

The examination objection related to the applied for mark being devoid of any inherent distinctiveness for caravan repair related services in class 37.

The delegate agreed with the applicant that the applied for mark may have a double meaning attributable to the word FIX conveying the meanings of repair or craving. Consequently, the applied for mark has some degree of inherent adaptation to distinguish and s41(4) was applicable.

The applicant relied on use of the mark since mid 2014, but the evidence was insufficient to justify registration.