Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – June 2019

LD&D Australia Pty Ltd v LD&D Australia Pty Ltd [2019] ATMO 85 (3 June 2019)

Successful opposition by LD&D to trademark registration of TRUE A2 filed on 9 February 2016 for various milk products in class 29.

The opponent prevailed under the s41 distinctiveness ground with s41 being applied as it stood prior to the Raising the Bar amendments

The delegate was satisfied that TRUE A2 is, to some extent, but not sufficiently, inherently adapted to distinguish the applicant’s goods. With respect to the general public, the ordinary signification of TRUE A2 is that the relevant goods do not contain A1 beta-casein protein and it is likely that other traders will think of or desire to use this term, or something closely resembling it, in respect of similar goods.

The delegate then when on to consider the applicant’s evidence of use which disclosed that, at the filing date, TRUE A2 was only being used in connection with the applicant’s A2 Platinum infant formula where it is displayed in a  minor manner and not clearly being used as a badge of origin. Hence, the delegate was satisfied that the applied for mark does not and will not distinguish the applicant’s goods from those goods of other traders.

 

Sportsbet Pty Ltd [2019] ATMO 86 (3 June 2019)

An application to register the trade mark SAME GAME MULTI filed on 30 April 2018 for various betting and gambling related goods and services in classes 9 and 41 was refused for lack of distinctiveness.

Supporting evidence of use was insufficient, particularly as it disclosed use of the applicant’s SPORTSBET mark in close proximity to SAME GAME MULTI.

 

Switch Superfoods Pty Ltd v Haglund Holdings Pty Ltd [2019] ATMO 87 (7 June 2019)

Unsuccessful opposition by Switch Superfoods to trademark registration of KETO SWITCH filed on 7 March 2017 for dietary supplements in class 5.

The opponent failed to establish any ground of opposition under ss 43, 44 or 58A.

Under s44, the opponent relied on its prior trademark registration for SWITCH covering goods in class 29 and retailing services in class 35. However, the delegate was satisfied that the differences between the trade marks and between the respective goods and services of the parties were sufficient to preclude a finding a deceptive similarity. Given this finding, the s58A ground was also not applicable.

The s43 ground failed because the opponent was relying on a comparison of the respective marks, rather than any connotation inherent within the applied for KETO SWITCH mark.

 

Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88 (11 June 2019)

This concerned an application by the opponent, Trek Bicycle, for 2 months extension of time to file evidence in support of its opposition to trademark registration of PROTREK filed on 20 July 2017 for cleaning products in class 3, vehicles in class 12 and retail services in class 35. There was a subsequent amendment, apparently by agreement, to exclude bicycle related goods and services.

The parties were involved in settlement negotiations, but could not reach agreement on terms or to enter a cooling off period. The opponent eventually filed its evidence some 2 months after the due date.

The settlement negotiations and other circumstances relied upon by the opponent did not satisfy the requirements of Reg 5.15(2)(a) or (b) and so the extension was refused.

The opponent then argued that the delegate could exercise discretion to admit late filed evidence, but the delegate declined to do so.

It appears the parties did subsequently reach a settlement and the opposition was withdrawn.

 

Yey Pty Ltd v Active Skin Pty Ltd [2019] ATMO 89 (11 June 2019)

Successful oppositions by Yey to trade mark registration of ACTIVESKIN (word and fancy script) filed on 24 March and 22 April 2015 for cosmetic and beauty care products in class 3 and related distribution services in class 35.

The opponent prevailed under the s60 ground by relying on its Australian reputation derived from use of the ACTIVESKIN trade mark for cosmetic retailing from 2006 and for beauty salon services from 2014.

Significantly, the applicant had earlier registrations dating from 2006 and 2009 for the Active Skin mark with use from 2004.

 

Fit n Fast Australia Pty Limited v Hungry Spirit Pty Limited ATF The Hungry Spirit Trust [2019] ATMO 90 (13 June 2019)

Successful oppositions by Fit n Fast to trademark registration of MOVE Training and MOVE Coaching filed on 4 December 2016 for goods and services in classes 9, 16 and 41 relating to training.

The opponent prevailed under the s44 ground by relying on its prior registrations for a series of trade marks containing MOVE with various numerals dating from December 2015. It did not file any evidence in support, but did file evidence in reply.

The applicant owned registrations for the trade marks MOVE@WORK, MOVE 4 LIFE, MOVE and iMove which dated from before the Opponent’s registered series of marks, but their coexistence with the Opponent’s series of marks did not feature in the reasons.

The applicant relied on prior continuous use under s44(4) and a licensing arrangement with Move 4 Life. Mr Walz was the sole director and founder of both companies. However, the delegate was not satisfied that the applicant, as distinct from Mr Walz, exercised financial control or any other form of control over use by Move 4 Life to show such use was authorised by the applicant. Consequently, s44(4) could not be satisfied.

 

Polo/Laurent Company LP v Continental Shelf 128 Limited [2019] ATMO 91 (14 June 2019)

Partly successful opposition by Polo/Laurent to trademark registration of SANTA MONICA POLO CLUB Logo shown below filed on 26 October 2016 for goods in classes 3, 18 and 25.

Trademark-Registration-Santa-Monica-Polo-Club-Logo 2

The applicant was partly successful under s44, but failed to establish any ground under ss 42(b), 60 or 62A.

Under s44, the delegate considered the applied for mark to be deceptively similar to the opponent’s prior registered mark shown below covering clothing, footwear and headgear in class 25. The words “Santa Monica Polo Club” within the applied for mark do not dispel the risk of consumers being caused to wonder whether the similarities indicate a common source in trade.

Trademark-Registration-Polo-Players-Logo 2

The applicant was obliged to delete class 25 from its trade mark application.

Under s60, the delegate was satisfied this Polo Player Logo mark has a moderate reputation in Australia on the proviso that when it appears it is usually with Ralph Lauren and/or Polo. However, the delegate was not satisfied as to the likelihood of confusion.

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. However, given the delegate’s finding under s60, the s42(b) ground also failed.

The opponent also relied on the s62A bad faith ground, but there was no evidence to support this.

 

Suzanne Grae Corp P/L v Suzanne Betro and Design West Mode P/L [2019] ATMO 92 (17 June 2019)

Unsuccessful opposition by Suzanne Grae to trademark registration of SUZANNE BETRO filed on 20 March 2017 for apparel in class 25 and retail clothing shop services in class 35.

The opponent relied on grounds under ss42(b), 44 and 60 but failed to establish any ground.

Essentially, the opponent relied on registration and use since the 1980s of its SUZANNE GRAE mark and argued that there were no other fashion retail chains using the term SUZANNE.

The applicant relied on use of the applied for mark since 2003 and referred to the SUSSAN clothing retail chain.

The delegate did not consider SUZANNE BETRO to be deceptively similar to SUZANNE GRAE, so the s44 ground of opposition failed.

Under s60, the delegate considered the opponent had shown a relevant reputation in SUZANNE GRAE, but not SUZANNE simpliciter. Given that “Suzanne” is a relatively common name and the overall differences in the respective marks, the delegate did not consider there to be a likelihood of confusion.

The opponent also relied on its reputation 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.

 

The Better Drinks Co Limited v Teavolution Pty Limited [2019] ATMO 93 (17 June 2019)

Unsuccessful opposition by Better Drinks to trademark registration of HONEST WATER filed on 8 September 2016 for various water products in class 32.

The opponent relied on grounds under ss42(b), 58 and 60 but failed to establish any ground.

The opponent had earlier trademark registrations for CHARLIES HONEST and CHARLIE’S HONEST FIZZ in class 32 and contended that it had used HONEST WATER for beverages in Australia since 2012.

The applicant had earlier trademark registrations for HONEST TEA and had used this mark since 2005 for tea based beverages.

Under the s58 ownership ground, the delegate found that HONEST TEA was substantially identical with the applied for HONEST WATER mark and that flavoured waters, including bottled tea, are the same kind of thing as bottled water. Since the applicant could therefor show earlier use of a substantially identical mark for the same kind of thing (with the opponent’s earliest corroborated use of HONEST WATER being in 2014), the s58 ownership ground failed.

The s60 ground failed because the delegate was not satisfied the opponent’s evidence established a sufficient Australian reputation, particular beating in mind bottled water is a general consumer product.

The opponent also relied on its reputation 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.

 

Philip Morris Products S.A v British American Tobacco (Brands Limited) [2019] ATMO 95 (19 June 2019)

Unsuccessful opposition by Philip Morris to trademark registration of Advanced Heat Technology Logo shown below filed on 4 March 2016 tobacco related products in classes 9, 11 and 34

Trademark-Registration-Advanced-Heat-Technology-Logo

The opponent relied on s41 and argued that the applied for mark was not sufficiently distinctive. It argued the device element was merely a graphic representation of the lit end of a cigarette which is common to the trade and the words “ advanced heat technology” indicate product quality (heat regulation) and are not an indicator of trade origin.

The delegate considered the applied for mark, as a whole, was sufficiently distinctive and capable of distinguishing the applicant’s goods.

 

Kinsel Pty Ltd v Bacchus Wine Merchants Pty Ltd [2019] ATMO 97 (24 June 2019)

Unsuccessful opposition by Kinsel to trademark registration of Cape Margaret Logo shown below filed on 9 February 2017 for alcoholic beverages in class 33.

Trademark-Registration-Cape-Margaret-Logo

The opponent relied on grounds under ss42(b), 44, 60 and 62A but failed to establish any ground.

The opponent owned prior trademark registrations for MARGARET and SWEET MARGARET in class 33 and relied on use of the MARGARET trade mark for wines since 1992, typically on wine labels, an example of which is below:

Trademark-Registration-Woodlands-Margaret-Label

The applicant contended that MARGARET is used by the Opponent as a sub-brand of its WOODLANDS wines. The delegate agreed with the applicant that the opponent’s evidence did not show independent trade mark use or any separate reputation in the term MARGARET and so the s60 ground failed. This characterisation of MARGARET featuring as part of a composite wine label is to be contrasted with the approach taken by Charlesworth J in Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515 where her Honour concluded that BAROSSA SIGNATURE functions as a trade mark, being a sub-brand which is part of the brand personality of Pernod Ricard.

The opponent also relied on its reputation 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.

The s62A bad faith ground also failed for lack of persuasive evidence. The opponent was really seeking the delegate to draw an adverse inference based on the mere awareness of the opponent’s Woodlands Margaret wines.

Finally, under the s44 ground, the delegate considered the applied for composite mark was not deceptively similar to the opponent’s prior MARGARET trademark registration.

 

Apple Inc. v Swatch AG (Swatch SA) (Swatch Ltd.) [2019] ATMO 98 (25 June 2019)

Unsuccessful opposition by Apple to trademark registration of ‘Tick different’ filed on 2 November 2015 (with an earlier 16 July 2015 priority date) for various IT products and peripherals in class 9.

The opponent relied on grounds under ss42(b), 44, 59, 60 and 62A but failed to establish any ground.

The opponent primarily relied on its prior class 16 trademark registration for THINK DIFFERENT and use of this mark as a slogan for promoting its various Apple products from 1997 to 2002 and various minor use since then.

The s44 ground failed because the delegate considered the applicant’s class 9 goods were not similar to the class 16 goods covered by the opponent’s THINK DIFFERENT registration.

Under s60, the delegate was not satisfied the evidence showed the opponent’s THINK DIFFERENT mark had a sufficient Australian reputation at the relevant July 2015 priority date.

The opponent also relied on its reputation 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.

Under the s59 ground, the delegate considered a mere statement form the opponent’s representative expressing an opinion that the applicant is primarily involved in the watch making business and did not intend to use the applied for mark for all the claimed goods was insufficient to shift the onus on to the applicant to affirmatively establish its intention over and above filing of the trademark application, particularly as the applicant’s evidence included overseas use of this mark for watches with wearable technology such as contactless payment technology.

The s62A bad faith ground also failed for lack of persuasive evidence.

 

Caterpillar Inc v Puma SE [2019] ATMO 99 (28 June 2019)

Unsuccessful opposition by Caterpillar to trademark registration of ‘procat’ filed on 21 October 2016 for goods in classes 18 and 25.

The opponent relied on grounds under ss42(b), 44 and 60 but failed to establish any ground.

The opponent primarily relied on its prior registrations for CAT (word and logo) in classes 18 and 25, as well as use of its CAT brand for earth moving equipment and ancillary merchandising such as clothing, footwear, bags and other accessories.

Under s44, the delegate found that the applied for ‘procat’ mark was not deceptively similar to the opponent’s CAT word mark and it necessarily followed that it was also not deceptively similar to the CAT Logo mark.

Under s60, the applicant conceded the opponent’s CAT Logo mark had acquired an Australian reputation. However, the delegate agreed with the applicant that the opponent’s evidence of use of the CAT word mark was minimal and insufficient to demonstrate the requisite reputation. The delegate considered the reputation acquired by the CAT Logo would serve to reduce the likelihood of deception or confusion and was not satisfied that, because of the reputation acquired by the CAT Logo, that the use of the applied for mark would be likely to deceive or cause confusion.

The opponent also relied on its reputation 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.

 

Mark Robinson and Brenda Robinson v Horticulture Innovation Australia Limited [2019] ATMO 100 (28 June 2019)

Partly successful opposition by Robinson to an application of removal of their trademark registration for SIT alleging non-use during the 3 years period ending on 30 April 2017.

The SIT registration dated from 5 June 2008 and covered a broad range of goods in class 31.

There was some use of SIT on invoices issued by Nature’s Blend Pty Ltd during the relevant period. Robinson owned a trademark registration for NATURE’S BLEND, but their evidence failed to establish the company was an authorised user either by financial control or otherwise.

However, the delegate exercised discretion in favour of leaving the SIT mark on the Register for a restricted specification of goods, namely, seeds, foodstuffs for animals being dehydrated foods, nutritional supplements and treats.

 

Homelink Real Estate Agency Co., Ltd. v Maxwell Investments Group Pty Ltd [2019] ATMO 101 (28 June 2019)

Successful opposition by Homelink to trademark registration of the Chinese Character mark shown below filed on 28 July 2016 for various real estate related services in class 36

Trademark-Registration-Chinese-Characters-Lian-Jia-Home-Link

There was an endorsement to the effect that the Chinese Characters may be transliterated as LIAN JIA which may be translated into English as LINK HOME.

Gerard Skelly represented the opponent.

The opponent prevailed under the s58 ownership ground.

The delegate was satisfied the opponent had prior use of a substantially identical mark in Australia arising from a Strategic Partnership Agreement with Ray White Real Estate dating from 1 May 2016. The Chinese Character mark was a stylised rendering of the applied for mark which used traditional characters. The stylised Chinese Character mark was used with LIANJIA, but the delegate was satisfied that this involved two alternative marks indicating the same trade source in different scripts. It was particularly relevant that the alternative marks were separated by a full stop.

The applicant’s evidence included images of properties said to be sold or leased since August 2015 and some of those images included the applied for mark, but they were undated and uncorroborated. The delegate did not consider them as convincing proof of trade mark use. The applicant also attempted to introduce a document purporting to be a rental bond agreement dated 18 August 2015. This was introduced in written submissions and did not form part of the applicant’s evidence, so the delegate gave it no weight. In any event, this document, even when considered with the properly filed evidence, could not substantiate trade mark use.

 

Switch Superfoods Pty Ltd Ltd. v Haglund Holdings Pty Ltd [2019] ATMO 102 (28 June 2019)

Unsuccessful oppositions by Switch Superfoods to registration of various trade marks containing SWITCH, namely ADRENAL SWITCH, POWER SWITCH, THERMAL SWITCH, AMINO SWITCH, ESTRO SWITCH, ALPHA SWITCH, VITALITY SWITCH, MENTAL SWITCH, THYRO SWITCH and MEAL SWITCH all filed on 7 July 2017 for various dietary and nutritional supplements in class 5.

The opponent relied on grounds under ss43, 44 and 58A but failed to establish any ground.

Under s44, the opponent relied on its prior trademark registration for SWITCH covering various nuts, seeds and related foodstuffs in class 29 as well as retailing services in class 35. However, the delegate did not consider the applied for goods to be similar or closely related to the registered goods and services. The delegate still went on to consider whether any of the applied for marks were deceptively similar to the registered SWITCH mark and concluded that none of them were deceptively similar.

None of the applied for marks were accepted under s44(4), so the s58A ground of opposition was not applicable. In any event, given the delegate’s findings under s44, this ground of opposition could not succeed.

The s43 ground of opposition also failed because there was no connotation in any of the applied for marks likely to give rise to deception or confusion. The opponent was essentially relying on the reputation derived from use of its SWITCH mark from 2012, but that is more appropriate to the s60 ground of opposition which was not relied upon.