Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – July 2021

Cumulo Group Pty Ltd v RTRNA PTY LTD [2021] ATMO 60 (1 July 2021)

Unsuccessful opposition by Cumulo Group to trademark registration of RTRNA filed on 8 February 2019 for various domestic utensils and containers in class 21 and a broad range of services in class 35.

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

The opponent did not file any evidence, so only the s44 ground could be considered. Under that ground the opponent relied on its prior registration for RETURNR covering relevant class 21 goods which was particularised in its Statement of Grounds and Particulars. However, in the absence of evidence, the delegate did not consider the applied for RTRNA mark to be deceptively similar to RETURNR.

 Schoolies Week Pty Ltd v Youth Travel Pty Ltd [2021] ATMO 61 (2 July 2021)

Successful opposition by Schoolies Week to trademark registration of Schoolies Tribe filed on 10 December 2018 for accommodation services in class 43.

The opponent prevailed under the s44 ground by relying on its prior registration for SCHOOLIES covering hotel reservations in class 42 which were regarded as similar services. The opponent also owned relevant prior registrations for BOOK SCHOOLIES and SCHOOLIES CENTRAL.

The delegate considered the applied for Schoolies Tribe mark to be deceptively similar to SCHOOLIES. 

Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2021] ATMO 62 (5 July 2021)

Unsuccessful opposition by Energy Beverages to trademark registration of KANGAROO MOTHER filed on 15 February 2019 for various goods in classes 5, 29, 30, 3 and 32.

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

The opponent has filed an appeal in the Federal Court.

The opponent is a subsidiary of Monster Beverages Corporation and relied on its prior use and registration of various MOTHER marks acquired from The Coca-Cola Company in June 2015.

The applicant owned registrations dating from 2017 and 2018 for trade marks containing or consisting of the words KANGAROO MOTHER covering various goods in classes 3, 5 and 21.

After acceptance and before the hearing, the applicant amended its specification of goods by deleting various coffee goods from class 30 as well as energy drinks and sports drinks from class 32.

Under s44, the delegate did not consider the applied for KANGAROO MOTHER mark to be deceptively similar to the opponent’s registered MOTHER mark which covered similar goods in class 32.

Under s60, the delegate was satisfied the opponent’s MOTHER mark rendered in a Gothic script and in verbal form had acquired an Australian reputation for energy drinks, but noted that “If anything, the significant reputation acquired by MOTHER has lessened the likelihood of deception or confusion” and concluded “MOTHER solus has such a strong reputation as being associated with the Opponent’s energy drinks that it is unlikely that a significant number of persons would consider that energy drinks bearing the notably different KANGAROO MOTHER trade mark would be caused to wonder whether, or deceived into thinking that, the energy drinks so marked came from the same trade source as the Opponent’s energy drinks.”

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

Crescent Wealth Investments Australasia Pty Ltd [2021] ATMO 63 (6 July 2021)

The applicant was successful in overcoming objections raised during examination of its applications for trademark registration of CRESCENT WEALTH logo shown below for various financial and investment services in class 36.

The objections were based on prior registrations for CRESCENT and CRESCENT CAPITAL PARTNERS covering similar services and owned by Crescent Capital Partners Management Pty Limited.

There was earlier litigation between the applicant and the owner of the prior registered marks essentially restraining the applicant from using the words CRESCENT WEALTH without including the applied for mark and clearly indicating that neither it, nor any of its services, is associated or affiliated with Crescent Capital Partners.

The delegate was satisfied the applicant’s evidence demonstrated prior continuous use of the applied for mark and permitted the application of s44(4).

The delegate also overturned the examination objection based on s42(b) by finding that the use of the applied for mark was not contrary to the specific wording of the Federal Court Orders.

Manuka Honey Appellation Society Incorporated v Lawrence Michael Howes [2021] ATMO 64 (7 July 2021)

Unsuccessful opposition by Manuka Honey Appellation Society to trademark registration of AUSTRALIAN MANUKA Logo shown below filed on 30 August 2017 for honey in class 30.

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

The opponent contended that the term manuka when used in relation to honey connotes certain produce only from New Zealand. The applicant’ s position was that manuka is a common name for Leptospermum scoparium (‘L. scoparium’), a tea tree species native to Australia and New Zealand and is descriptive of both the flowering plant from which honey is gathered and the honey itself.

The primary ground of opposition was under s43 that the applied for mark contains a connotation, namely a specific floral honey exclusively from New Zealand and pairing the word ‘manuka’ with ‘Australian’ is inherently contradictory, such that use of the applied for mark would be likely to deceive or cause confusion.

The delegate summarized the evidence as to the naming of L. scoparium and the honey produced therefrom and concluded “I am satisfied that the word manuka, when used in relation to honey, connotes that L. scoparium is its floral source. This specific connotation does not appear restricted to where these flowers grew. It follows that I am not satisfied that the geographical term ‘Australian’ paired with this word is likely to deceive or cause confusion.”

The s42(b) contrary to law ground failed, particularly as ‘manuka’ is not a recognised geographical indicator for honey and the chemical assay evidence relied upon by the opponent did not support conditions unique to New Zealand.

The s60 reputation ground also failed, with the delegate finding that ‘manuka” was not used as a trade mark. 

SJT Enterprises [2021] ATMO 65 (14 July 2021)

The applicant was able to overcome an objection raised during examination of its application for trademark registration of CURVACEOUS FOR WOMEN WITH CURVES filed on 2 July 2020 for various retail, wholesale, distribution, advertising and promotional services in class 35.

The examination was based on the applied for mark lacking sufficient distinctiveness, particularly as CURVACEOUS is descriptive of clothing designed to be worn by curvaceous women and the retailing of such goods.

The applicant also relied on use of this mark since 2007 for clothing retailing services.

There was evidence of use of “curvaceous” by other traders and the delegate formed the view there was a common practice of naming categories of clothing after types of figures or body shapes. The delegate concluded “curvaceous’ describes a characteristic of the goods being sold. Further, the words “for women with curves” also have an unambiguous meaning. The delegate concluded “It is therefore plausible that the Trade Mark, despite being comprised of several words which are unpunctuated, is one that other traders would think of and desire to use.

Hence the applied for mark fell under s41(4) as having some inherent adaptation to distinguish but it was necessary to also consider the applicant’s use of this mark. The delegate was satisfied the evidence relied upon indicated the applied for mark had capacity to distinguish the relevant services and qualified for registration. 

The Grapevine BVBA v Are Media Pty Ltd [2021] ATMO 66 (15 July 2021)

Unsuccessful opposition by The Grapevine to trademark registration of THE INSIDERS COMMUNITY filed on 11 December 2018 for a broad range of services in class 35.

The opponent prevailed under the s44 ground by relying on its prior registrations for The Insiders Logo shown below covering advertising, business management, business administration and office functions in class 35.

The registrations included an endorsement claiming the colour Tourquoise (Pantone 315C).

The delegate considered the applied for mark to be deceptively similar to the opponent’s registered mark and for similar services.

The applicant sought to rely on ‘honest concurrent use’, but the delegate considered the evidence relied upon was insufficient to show the applied for mark was honestly adopted. It was also inappropriate to apply the ‘other circumstances’ provision in favour of the applicant.

Having found the s44 ground of opposition was upheld for the vast majority of the services claimed by the applicant, the delegate then went on to consider whether it was appropriate for the application to proceed for some limited services, but declined to carve out any of the applied for services.