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)

Successful 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.

Arlec Australia Pty Ltd v Muller et Cie [2021] ATMO 68 (16 July 2021)

Successful opposition by Arlec Australia to trademark registration of AIRELEC ( Stylised) as shown below filed on 30 July 2018 for various goods and services in classes 9, 11 and 37, particularly relating to heating.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its ARLEC trade mark.

Sojo Pty Ltd v Ian William Wills [2021] ATMO 67 (19 July 2021)

Successful opposition by Sojo to trademark registration  of Just a Tradie filed on 12 September 2018 for apparel in class 25.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its Tradie trade mark for clothing, particularly underwear.

The a2 Milk Company Limited v Societe des Produits Nestle S.A. [2021] ATMO 69 (26 July 2021)

Unsuccessful opposition by The a2 Milk Company to trademark registration of NAN A2 Logo shown below filed on 24 January 2019 for dietetic foodstuffs in class 5 and milk products in class 29.

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

Essentially the opponent relied on Australian use since 2004 of its a2 and a2 Milk marks for dairy products free of A1 proteins, as well as various prior registrations for trade marks containing or consisting of A2 in stylised form, including:

The s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to any of the opponent’s registered marks. The delegate noted the descriptive nature of A2 and noted that due to the descriptive nature of a2, the general effect or impression flowing from each of the respective marks is linked to its particular stylized rendition of “a2” rather than the letter/number combination “a2” itself.

Under s60, the delegate considered the reputation of the opponent’s a2 and a2Milk marks resided in their manner of rendition and not in the plain words and was not satisfied as to use of the opposed mark giving rise to a likelihood of confusion.

The opponent also relied on the reputation of its a2 and a2 Milk marks 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.

Biodental Remin Ltd v Biodental Industries Pty Ltd [2021] ATMO 70 (27 July 2021)

Unsuccessful oppositions by Biodental Remin to applications for removal of its trademark registrations for anticay and ANTICAY alleging no good faith use in the 3 years period ending 26 July 2019.

The registrations dated from 24 August 2009 and 21 August 2014 and covered various goods in classes 3, 5 and 30.

The opponent is a dental technology company specialising in the development of formulas and compounds for dental hygiene. It was placed under external administration in February 2015 and became insolvent in June 2017 with a liquidator appointed.

In 2009, the removal applicant adopted the relevant trade marks for a calcium phosphate complex for use in a range of dental goods. At that time, the removal applicant was a related entity of the opponent. The rights to these marks were subsequently assigned to the opponent in 2010.

The opponent relied on a single invoice of sale to a business in India, but the delegate was not satisfied this was conclusive proof. The evidence was also insufficient to support Australian sales of toothpaste containing the anticay product as an ingredient. The delegate found the registered marks had not been used in Australia during the relevant period and noted the opponent was under external administration during the entirety of the relevant non-use period.

The delegate was not prepared to exercise discretion and directed the trade marks be removed from the Register.

Olaf Kretzschmar v IP Service International Pty Ltd [2021] ATMO 71 (27 July 2021)

Unsuccessful opposition by Kretzschmar to trademark registration of IP SERVICE INTERNATIONAL Logo shown below filed on 22 June 2019 for various intellectual property related services in class 45.

The opponent relied on grounds of opposition under ss 41 and 42(b), but failed to establish either ground.

The opponent is a director and founder of One IP International Pty Ltd and was one of the founders of the applicant.

The delegate considered the applied for mark, when considered in its entirety, was sufficiently distinctive, so the s41 ground failed.

Under s42(b) the opponent relied on copyright to allege that use of the applied for mark would be contrary to law. The opponent asserted ownership of copyright in the following logo:

However, the delegate considered there was an insufficient degree of resemblance between this logo and the applied for mark.

Feelgood Lifestyle Brands Pty Ltd v Zambrero Australia Holdings Pty Ltd [2021] ATMO 72 (29 July 2021)

Unsuccessful opposition by Feelgood Lifestyle Brands to an application for removal of its trademark registration for FeelGood alleging no good faith use in the 3 years period ending 12 January 2020.

The registration dated from 11 May 2005 food and drink related services in classes 39 and 43.

The opponent relied on business and company name registrations as well as preparatory steps to use the registered mark, but the delegate was not satisfied these activities constituted good faith commercial use of the mark. There was no ‘objectively ascertainable commitment’ to provide a vendible service under or by reference to the mark.

The delegate was not satisfied there was any obstacle to use of the registered mark and found no basis for a favourable exercise of discretion; so the FeelGood mark was removed from the Register.

Align Technology Inc v Wuxi EA Medical Instruments Technologies Ltd [2021] ATMO 73 (30 July 2021)

Unsuccessful oppositions by Align Technology to registration of 6 trade marks containing ANGEL ALIGN filed on 23 November 2018 for a range of dental related goods and services

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

The opponent relied on use and registration of its family of ALIGN and INVISALIGN marks

The delegate formed the view that “align” is descriptive and a function of the relevant orthodontic aligners. The presence of ANGEL in the opposed marks was considered a sufficient point of differentiation. While the reputation of the Invisalign word and logo marks was established, the delegate was not satisfied the evidence showed a sufficient reputation in ALIGN. The specialist nature of the goods and the intervention of trained healthcare professionals were significant factors against a finding of confusion.

Under the s62A bad faith ground, the opponent pointed to confidential disclosures in 2007 arising from due diligence into the opponent’s possible acquisition of a predecessor in business of the applicant, as well as the applicant’s conduct in adopting similar coloured get-up to that used by the opponent. The delegate’s reasons to dismiss the bad faith ground were brief in concluding there was nothing in the evidence which established or enabled an inference to be drawn that the applicant had any reasonable grounds on which to believe it was not entitled to file the trade mark applications. 

The opponent subsequently appealed the delegate’s decision and the opposed trade mark applications proceeded to registration with no order as to costs.

Wild Flour Cafe Pty Limited v Michael Rose [2021] ATMO 74 (30 July 2021)

Unsuccessful opposition by Wild Flour Café to trademark registration of WILDFLOUR ARTISAN BAKERY & CAFÉ (Stylised) as shown below filed on 1 March 2019 for various primarily coffee related goods in class 30, retail services in class 35 and coffee grinding services in class 40.

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

The delegate was satisfied the applied for mark was substantially identical with the opponent’s WILD FLOUR mark which had been used before the 1 March 2019 filing date, but the delegate considered this use was confined to café services, takeaway services and catering services which were not the same kind of thing as any of the goods or services covered by the applied for mark. There was also evidence of the opponent’s use of its WILD FLOUR mark for particular goods sold at its café including packaged ground coffee, but it was unclear as to specifically when this occurred. The delegate also considered the provision of foods and beverages from the opponent’s café was not a retail service. Further, while the opponent did grind coffee, this was an internal business function and not a distinct service provided to others. Hence the s58 ownership ground failed.

Under the s42(b) ground, the opponent asserted that use of the applied for mark would be contrary to the Australian Consumer Law and constitute passing off. However, the opponent had been using its WILD FLOUR mark for only some six months before the relevant 1 March 2019 filing date and the evidence relied upon was insufficient to establish a requisite reputation.

The delegate was not satisfied that the applicant’s conduct in filing his trade mark application in ignorance of the opponent’s unregistered WILD FLOUR trade mark is an act falling short of standards of acceptable commercial behaviour which constitutes bad faith, so the s62A ground also failed.

Seven Network (Operations) Ltd v Bangkok Broadcasting & TV Co. Ltd. [2021] ATMO 75 (30 July 2021)

Successful opposition by Seven Network to trade mark registration of the 7 HD Logo shown below filed on 26 November 2018 for various goods and services in classes 9, 38 and 41.

The opponent prevailed under the s60 ground by relying on the Australian reputation of the various iterations of its 7 trade marks for television broadcasting and related services, notwithstanding there has been Australian use of the applied for mark since at least 2014 with its broadcasts being directed to Thai immigrants and expatriates living in Australia.

The applicant has appealed the delegate’s decision.