Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – July 2020

Bacardi & Company Limited v Dickinson Distribution Group Pty Ltd [2020] ATMO 117 (1 July 2020)

Unsuccessful opposition by Bacardi to trademark registration of Royal Bombay Premium Lager filed on 11 August 2017 for beer products in class 32.

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

The opponent primarily relied on use and registration of its Bombay Sapphire brand of gin.

Under s44, the opponent relied on its prior trademark registrations for BOMBAY SAPPHIRE word and label marks in classes 32 and 33. However, the delegate di not consider the applied for mark to be substantially identical with or deceptively similar to any of those registered marks.

Under s60, the opponent relied on the Australian reputation derived from its use of the BOMBAY SAPPHIRE marks for gin. The delegate was satisfied as to the requisite reputation being established by the evidence. However, given the differences in the respective marks and goods, the delegate considered confusion unlikely.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for mark would be misleading or deceptive and contrary to the Australian Consumer Law. However, given the delegate’s finding under s60, the s42(b) ground also failed.

The Green Vineyards Pty Ltd v McWilliam’s Wines Group Limited [2020] ATMO 118 (7 July 2020)

Successful opposition by The Green Vineyard to an application for removal of its trademark registration for WINEMAKER’S CUT alleging non-use during the 3 years period ending on 2 January 2018.

The trademark registration dated from 31 January 2012 and covered wine in class 33.

The opponent asserted the WINEMAKER’S CUT trade mark was used in the relevant period in relation to a 2010 vintage shiraz sold to a limited customer list and without any advertising or listing on its website. The evidence included an undated photograph of this product and a document showing sales of some 151 bottles to 3 businesses during the relevant period.

The delegate considered this evidence corroborated use of the registered mark for the registered goods and was sufficient to rebut the allegation of non-use; so he directed the mark to remain on the Register.

Australian Black Sheep Pty Ltd v Australian Ugg Pty Ltd [2020] ATMO 119 (8 July 2020)

Unsuccessful oppositions by Australian Black Sheep to trademark registration of AUSTRALIAN UGG ORIGINAL (plain word and stylised versions) filed on 16 October 2016 for footwear in class 25.

Significantly, the delegate did not award costs to the applicant because it contributed unnecessarily to the cost of the proceedings.

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

Under s44, the opponent relied on its prior registrations for stylised trade marks with the words ORIGINAL UGG or ORIGINALS UGG AUSTRALIA. However, the delegate considered that, given the descriptiveness of these textual elements, the scope of protection afforded by these registrations was minimal and hence the applied for marks were not deceptively similar to any of these registered marks.

Under s60 the opponent relied on the Australian reputation derived from use of one of its registered marks, namely the mark shown below:

However, the evidence relied upon was insufficient to establish the requisite reputation, so this ground failed.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for mark would be misleading or deceptive and contrary to the Australian Consumer Law and/or constitute passing off under the common law. However, given the delegate’s finding under s60, the s42(b) ground also failed.

Under s62A, the opponent sought to establish bad faith arising from the trademark applications being filed after the opponent sent a letter putting the applicant on notice of its rights. However, the delegate considered the applicant was merely seeking to protect its position, particularly as it could seemingly rely upon use from 2009 which was well before the opponent’s trademark registrations.

Zillow Inc v Zillo & Co Pty Ltd [2020] ATMO 120 (13 July 2020)

Unsuccessful opposition by Zillow Inc to trademark registration of ZILLOW + HUTCH filed on 15 September 2017 for furniture in class 20 and interior design services in class 42.

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

The opponent was previously unsuccessful in its opposition to a stylised version of the ZILLOW + HUTCH mark reported in the June 2020 decisions.

AS noted in the earlier decision, the opponent operates a US based online real estate platform under the trade mark ZILLOW and expanded this offering in 2017 through the development of an interior design app under the name HUTCH.

Under the s58 ownership ground, the opponent relied on prior Australian use of ZILLOW, but the delegate did not consider the applied for mark to be substantially identical with ZILLOW, so that ground failed.

Under s60,  the delegate was satisfied the opponent’s ZILLOW mark had acquired an Australian reputation for real estate services in the US market, but considered there was no Australian reputation in HUTCH for interior design services, particularly as that name had only been used for some nine months before the filing date of the applied for mark. The delegate did not consider there to be a likelihood of confusion given that furniture and interior design are, at best, tangentially related to the opponent’s ZILLOW real estate advertising services.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for mark would be misleading or deceptive and contrary to the Australian Consumer Law and/or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

The s62A bad faith ground also failed. A mere assertion by the opponent that the applicant was likely aware of the ZILLOW mark was insufficient to establish bad faith.

Brightflash USA LLC v China Trade Services Pty Ltd [2020] ATMO 121 (14 July 2020)

Unsuccessful opposition by Brightflash to trademark registration of iWatchiT (stylised) filed on 9 November 2017 for smart watches in class 9.

The opponent relied solely on the s44 ground of opposition based on its prior trademark registration and application for IWATCH covering global positioning system devices, and accessories, parts, components, and cases for such goods, as well as computer software, computers, computer hardware, computer peripherals, wireless communication devices, and accessories, parts, components, and cases for such goods in class 9.

The delegate considered smart watches to be a wearable computer in the form of a wristwatch with various functions similar to a computer or a wireless communications device. As such, smart watches were similar to computers covered by the opponent prior IWATCH application. However, the delegate did not consider the applied for iWatchiT mark to be deceptively similar to IWATCH.

 ABCDEX Pty Ltd and Burkhard Geiger v Reinahrd Lange [2020] ATMO 122 (14 July 2020)

Unsuccessful opposition by ABCDEX and Geiger to trademark registration of LOV filed on 25 October 2016 for various goods and services in classes 5, 41 and 43.

The opponent relied solely on the s44 ground of opposition to the applicant’s services in classes 41 and 43 based on its prior trademark registration for LOV covering various charitable financial services in class 36. However, the delegate did not consider the respective services to be similar.

Monster Energy Company v Peter Balthazar [2020] ATMO 123 (15 July 2020)

Successful opposition by Monster Energy to trademark registration of STAY SHREDDED Logo shown below filed on 19 July 2017 for various sports apparel in class 25.

The opponent prevailed under the s60 ground by relying on the Australian reputation derived from use of its “Claw Icon” mark shown below in relation to energy drinks and sponsorship of athletes and sporting events, as well as use of the Claw Icon on clothing.

The delegate was satisfied that the opponent’s evidence has established the requisite reputation of this mark in the Australian market primarily for energy drinks, but also the associated apparel and merchandise offered for sale at sponsored sporting events.

Further, the delegate considered the tail of the applied for mark has conceptual similarity to the ‘Claw Icon’ element of the MONSTER trade marks and concluded:

Having regard to the Opponent’s substantial reputation in its trade marks, the conceptual similarity of the competing trade marks and the widespread use by the Opponent of clothing and apparel for both marketing and for sale as products in their own, I am satisfied that relevant consumers will be caused to wonder if there is some connection between goods bearing the Trade Mark and those for which the Opponent has acquired a reputation under the MONSTER trade marks.

Banca Sella Holdings S.p.A. v Dominet Digital Corporation Pty Ltd [2020] ATMO 124 (21 July 2020)

Unsuccessful opposition by Banca Sella Holdings to trademark registration of ‘sellabitcoin.com.au’ filed on 14 September 2016 for various financial and computer related services in classes 36 and 42.

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

Neither party filed evidence or submissions. Hence, the matter was determined according to material in the Statement of Grounds and Particulars.

Under s44, the opponent relied on its prior registration for Banca Sella (Stylised) in class 36. However, the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to this registered mark.

The s60 ground necessarily failed because the opponent did not file any reputation evidence and could not discharge its onus.

KISS NAIL PRODUCTS INC v KIS MY BODY Pty Ltd [2020] ATMO 125 (21 July 2020)

Successful opposition by Kiss Nail Products to trademark registration of KIS (plain word and stylised version) filed on 22 December 2015 for various cleaning and personal care products in class 3.

Each application was accepted with a s44(3)(a) endorsement indicating honest concurrent use was relied upon.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its KISS trademarks derived from use in Australia since 1989 in relation to a range of beauty products. The delegate was satisfied that, given this reputation, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the opponent’s KISS trademarks and the applied for KIS marks.

Optimed Technologies Pty Ltd [2020] ATMO 126 (27 July 2020)

The Registrar declined to revoke a trademark registration for OPTIMED filed on 7 August 2018 and covering various import and export, retail and wholesale, promotional and business information services in class 35 including such services relating to medical devices.

The owner successfully challenged an intention to revoke registration under s84A based on a prior registration for OptiMed covering various medical and surgical apparatus in class 10. It filed evidence as to use of the OPTIMED mark since 2014 and the regulated nature of the medical devices market. This evidence supported a finding of honest concurrent use and it was not reasonable to revoke registration.

Doreen Fielding v Sareen Holdings Pty Ltd [2020] ATMO 127 (29 July 2020)

Unsuccessful opposition by Fielding to an application for removal of her trademark registration for SAREEN STONE Logo alleging non-use during the 3 years period ending on 4 February 2017.

The trademark registration dated from 1 November 2007 and covered various building materials in class 19 and furniture in class 20.

The opponent relied on an informal licensing arrangement but failed to provide any evidence corroborating control being exercised over the use of the mark being relied upon. In the absence of such evidence, the delegate was not satisfied the use relied upon was authorised by the owner through quality control or financial control. Further, the delegate was not prepared to exercise discretion to leave the mark on the Register merely for possible future use. Hence, the delegate directed the trademark registration be removed in its entirety.

Shisheido Co Ltd v Dr Kurt Wolff GmbH [2020] ATMO 128 (30 July 2020)

Unsuccessful opposition by Shiseido to an application for removal of its trademark registration for TUNING COLOR GROUP alleging non-use during the 3 years period ending on 9 August 2016.

The trademark registration dated from 3 March 2011 and covered various personal care and beauty products in class 3.

The delegate allowed late-filed evidence from the opponent, but considered it had limited probative value.

The opponent asserted the registered mark had been used on a specific range of hair colouring products as part of the PRIMIENCE range directed to the professional and salon market. However, the delegate considered the evidence relied upon did not substantiate trade mark use, Rather, the phrase “Tuning Color Group” operated to describe or delineate between the different colours available for sale within the PRIMIENCE range.

The delegate also declined to exercise discretion to leave the mark on the Register.

Siemens Healthcare Diagnostics Inc. v Abbott Laboratories [2020] ATMO 129 (30 July 2020)

Unsuccessful opposition by Siemens to trademark registration of READIFLEX filed on 20 April 2018 for various goods in classes 5, 9 and 10.

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

The opponent essentially relied on its use from 1997 and prior registration of the trade marks READY PACK and FLEX.

Under the s60 ground, the delegate agreed with the applicant that the opponent’s evidence was insufficient to establish the requisite Australian reputation in either of its READY PACK or FLEX marks. There was also no compelling evidence of a family of FLEX suffix mark as contended by the opponent.

Under s44, the delegate did not consider the applied for READIFLEX mark to be deceptively similar to the opponent’s READY PACK mark. The delegate was more cautious when comparing READIFLEX with FLEX and considered deceptive similarity to be finely balanced, but considered the risk of confusion was reduced having regard to the target market for the respective goods, namely trained professionals in clinical and medical laboratories.

Under the s62A bad faith ground, the opponent argued that both parties’ goods were for in-vitro testing and the applicant would have known of the applicant’s marks. However, the delegate was not satisfied the applied for mark was coined to gain some unfair benefit or advantage over the opponent.

Glug Pty Ltd v Little Wonders Wine Company Pty Ltd [2020] ATMO 130 (31 July 2020)

Successful opposition by Glug to an application for removal of its trademark registration for Tumbleweed alleging non-use during the 3 years period ending on 17 October 2017.

The trademark registration dated from 28 April 2009 and covered wine in class 33.

By way of background, the removal applicant filed an earlier non-use removal application on 26 April 2017, but it did not proceed for procedural reasons.

In the current non-use removal application, the removal applicant was refused an extension to file evidence, but subsequently filed material out of time. The delegate considered this had no probative value and gave it no weight.

The relevant use of the Tumbleweed mark relied upon by the opponent was by Glug Management Company Pty Ltd (GMC) with ownership of the registered mark being transferred to GMC on 24 July 2018. Hence, it was necessary to decide whether such use by GMC was authorised by Glug Pty Ltd which the delegate decided in the affirmative. Both companies had the same directors and the delegate was prepared to infer a unity of purpose.

The next issue was whether the use by GMC was in good faith. The relevant use commenced after Glug was contacted by the removal applicant on 30 March 2017. Glug then rushed to get labels printed in mid-April 2017 which were applied to a batch of wine it had sitting around from 2013, selling at $5.99 per bottle. Enough labels were printed for just 108 cases, with actual sales of less than 16 cases. The delegate referred to case law establishing that the ‘good faith’ requirement requires real or genuine use in a commercial sense, and not fictitious or token use. The thing that must be real or genuine by ordinary commercial standards is the use itself, not the motives that led to that use. The delegate was satisfied that, on balance, the advertising and sales of wine under the Tumbleweed mark was done for ordinary commercial reasons, namely profit and goodwill and that the quantum of sales was in keeping with a commercial quantity of wine.

The outcome may have been different if the removal applicant’s earlier non-use removal application had proceeded in the usual way, but the delegate naturally did not express a view on that.