Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – July 2019

Salesforce.com, Inc v Intygrate Pty Ltd [2019] ATMO 103 (1 July 2019)

Successful opposition by Salesforce to trademark registration of the composite mark shown below filed on 15 March 2017 for various software related goods and services in classes 9, 16 and 42

Trademark-Registration-Force-React-Logo

The opponent prevailed under the s44 ground. The delegate considered the applied for mark was deceptively similar to the opponent’s FORCE trade mark registrations (rendered in block capitals and in stylised script forms) which covered similar goods/services. The word FORCE was an essential feature of the applied for mark and this element would leave a considerable impression in the mind of a consumer.

 

David Francis Mair v Data Republic PL [2019] ATMO 104 (4 July 2019)

Partly successful opposition by Mair to an application for removal of his trademark registration for REPUBLIC alleging non-use during the 3 years period ending on 13 May 2017.

The REPUBLIC registration dated from 12 October 2004 and covered various business, public relations, marketing and brand consultancy services in class 35.

Mair had acquired the assets of Republic Consulting Pty Ltd on 12 July 2017, including the REPUBLIC trademark registration, following its voluntary administration.

The word REPUBLIC was used in the republic.net.au domain name, but the delegate did not discuss whether or not that could be regarded as trade mark use. The focus was on whether the use of a composite mark containing REPUBLIC BE HEARD with a four-square device as shown below could be regarded as use of the registered REPUBLIC mark with additions or alterations that did not substantially affect its identity.

Trademark-Registration-Republic-Be-Heard-Logo

The delegate noted the words “BE HEARD” were presented in a subtle manner below the word REPUBLIC, but the four-square device had at least equal prominence and was visually striking. Consequently, there was not a total impression of similarity and use of the composite mark could not be considered use of the REPUBLIC word mark.

However, the evidence as to the landing page of the opponent’s website could be relied upon to show use of the REPUBLIC word mark in relation to the services listed on that page. Further the invoices relied upon showed use of the domain name which corroborated use of the REPUBLIC word mark and the delivery of services by reference to it. The delegate was satisfied the invoices showed trade mark use in relation to marketing, public relations and brand consultancy services, but not business management or business administration services. The opponent failed to satisfy the delegate that it is reasonable to exercise discretion not to remove the REPUBLIC trade mark for these types of business services.

 

Swatch AG (Swatch SA) (Swatch Ltd.) v Apple Inc. [2019] ATMO 105 (8 July 2019)

Unsuccessful opposition by Swatch to trademark registration of THINK DIFFERENT filed on 24 February 2016 for various computer related goods in class 9.

The opponent relied on grounds under ss41, 44, 59 and 62A but failed to establish any ground.

Under s44, the opponent relied on its prior registration for ‘Tick different’, but the delegate did not consider the applied for THINK DIFFERENT mark to be deceptively similar. The opponent also relied on other registrations for the identical THINK DIFFERENT trade mark in classes 35 and 36, but they covered very different services.

Under s41, the delegate considered THINK DIFFERENT was sufficiently inherently adapted to distinguish the applicant’s goods.

The s59 ground failed because the opponent’s evidence was insufficient to shift the onus on to the applicant to substantiate an intention to use the applied for mark.

The opponent’s evidence was also insufficient to establish the s62A bad faith ground of opposition.

 

Factory Direct Garage Doors Pty Ltd v Starship Australia Pty Ltd [2019] ATMO 106 (10 July 2019)

Successful opposition by Factory Direct to an application for removal of its trademark registration for GRYPHON GARAGE DOORS & Device alleging non-use during the 3 years period ending on 6 June 2017.

The trademark registration dated from 23 December 2004 and covered various door panels, fittings and related goods in class 7.

The trade mark and registration were previously owned by Mr Cervi, a director and secretary of Gryphon Garage Doors Pty Ltd (GGD). The business of GGD was sold on 1 July 2014 to Gryphon Home Improvements Pty Ltd (GHI) and Mr Cervi was also a director and secretary of that company. GHI was placed into voluntary liquidation on 21 March 2016. The trade mark and registration were subsequently transferred to Factory Direct and this was recorded by IP Australian on 20 June 2017. Mr Cervi’s wife is the sole directory and secretary of Factory Direct. Between June 2014 and March 2016, GGD and then GHI sold garage doors bearing the trade mark to customers from premises in Victoria and Western Australia.

The removal applicant relied on evidence from Mr Cowling who was the CEO of the GGD and GHI businesses from 2012 to October 2015.

The case turned on whether use of the registered mark during the relevant period was authorised and under the control of Mr Cervi and the delegate was satisfied there was sufficient control. Significantly this case was decided after the Full Federal Court appeal in the Trident case which referred to authorised use based on unity of purpose.

The removal applicant also contended that any use of the registered mark was only for door panels of metal and the registration should be restricted to those goods. However, the delegate was prepared to exercise discretion and leave the mark on the Register for all the remaining goods as well, given their similarity to door panels of metal.

 

Vivo Mobile Communication Co Ltd v ASUSTEK COMPUTER INCORPORATION [2019] ATMO 108 (15 July 2019)

Partly successful opposition by Asustek to an application for removal of its trademark registration for ASUS VIVOBOOK alleging non-use during the 3 years period ending on 20 November 2017.

The ASUS VIVOBOOK registration dated from 5 November 2012 and covered a broad range of computers and other goods in class 9.

The removal applicant had been using the VIVO trademark for mobile phones and its application to register the VIVO mark was blocked by the ASUS VIVOBOOK registration.

The delegate was satisfied the ASUS VIVOBOOK mark was used during the relevant period, but only for notebook computers. Discretion was exercised to leave this mark on the register for these goods as well as tablet computers, but not for any of the other goods in class 9.

 

Babawine Pty Ltd [2019] ATMO 109 (19 July 2019)

An application for trademark registration of GO FOAM FREE! filed on 30 April 2018 for plastic containers for packaging in class 20 was refused.

The delegate considered the applied for mark had some degree of inherent adaptation to distinguish, but there was no supporting evidence of use and so registration was refused.

 

Matthew Gulia v JD Sports Fashion Plc [2019] ATMO 112 (25 July 2019)

Unsuccessful opposition by Gulia to an application for removal of his trademark registration for UNDISPUTED alleging non-use during the 3 years period ending on 14 January 2018.

The UNDISPUTED trademark registration dated from 22 April 2009 and covered various goods in classes 25 and 28.

The opponent was self-represented and his evidence was insufficient to show use of the UNDISPUTED trade mark or any reason for exercising discretion.

 

Multi Access Limited v Guangzhou Wang Lao Ji Great Health Industry Co Ltd [2019] ATMO 113 (30 July 2019)

Unsuccessful opposition by Multi Access to applications for removal of its 6 trademark registrations for various Chinese Character marks alleging non-use during the 3 years periods variously ending on 2 April 2017 or 14 May 2017.

The trademark registrations covered various goods in classes 5, 30, 32 and/or 33. The Chinese Characters were translated into English as OLD LUCKY.

The opponent’s evidence was largely directed to retaining the trademark registrations for various forms of herbal/medicinal tea and primarily relied on website extracts form the Internet Archive Wayback Machine and some invoices.

The invoices were in Chinese without independent English translations and the delegate could not be satisfied as to the relevant goods. Also, the names of the relevant Australian recipients were stamped on the invoices and appeared to have been added. There were also some shipping documents paired with other invoices, but they were before the relevant period from 2011 to 2013. The website evidence pointed to the relevant page being last updated in September 2008. When combined with the invoices and shipping documents, the evidence pointed to some use during the period 2008 to 2013. There was also some other evidence relating to sales of tea packs in a suburban Sydney shop, but this evidence was undated or after the relevant period.

Hence the opponent’s evidence was insufficient to rebut the allegations of non-use and the delegate was not prepared to exercise discretion in favour of the opponent.

 

Tony Aldahr and Elham Aldahr v ROADEYES SAS [2019] ATMO 114 (31 July 2019)

Successful opposition by Aldahr to an application for removal of their trademark registration for ROADEYE alleging non-use during the 3 years period ending on 9 February 2018.

The ROADEYE registration dated from 10 April 2010 and covered video cameras combined with video recorders in class 9.

The opponents acquired the ROADEYE trade mark and registration from Mr Wharton during the relevant period and their evidence disclosed use during the relevant period through Aus-Audio Warehouse Pty Ltd, a company they controlled. The delegate was satisfied this showed genuine commercial use of the registered mark for the registered goods during the relevant period and rebutted the allegation of non-use.

 

JB Hi-Fi Limited [2019] ATMO 115 (31 July 2019)

Successful action by JB Hi-Fi against a Notice of Intention to Revoke its trademark registration for STACK filed on 12 November 2017 for various goods and services in classes 9, 16, 35, 38 and 41.

The Revocation Notice was based on a prior registration for ‘Stacks/’ covering similar or closely related services in classes 35, 41 and 42 which was not raised as an objection during examination.

The delegate was satisfied the prior registration constituted a valid ground for rejection under s44. However, JB Hi-Fi filed evidence seeking to rely on honest concurrent use under s44(3)(a) with such use being largely by its predecessor in title, Scribal Custom Pty Ltd over a period of some 13 years prior to filing of the application for trademark registration. The delegate considered this evidence was relevant for some goods/services, but would not have enabled acceptance for all of the overlapping goods/services. Hence, having considered all the circumstances that existed when the trade mark became registered, the delegate was satisfied that it should not have been registered.

The delegate then went on to consider the second limb of s84A, namely whether it is reasonable in all the circumstances to revoke the registration of the trade mark and considered it was not reasonable to do so. In particular, JB Hi-Fi has invested heavily in the promotion of the trade mark and adapted its business based on the assumption that it was validly registered. Since registration, JB Hi-Fi has used the trade mark in relation to an expanded scope of services and instituted steps towards future expansion. Further, JB Hi-Fi has also waived certain contractual options it had at its disposal because it assumed the trade mark was validly registered and would remain so. Hence, the delegate refused to revoke the registration.