Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – June 2020

G. & K. Fine Foods Pty Ltd v J DeLuca Fish Company, Inc. [2020] ATMO 97 (2 June 2020)

Unsuccessful opposition by G & K Fine Foods to an application for removal of a trademark registration for ‘by Delucas’ in the name of Royal Foods Aust Pty Ltd alleging non-use during the 3 years period ending on 18 January 2018.

The trademark registration dated from 14 June 2009 and covered various foodstuffs in classes 29 and 30.

The ‘By Delucas’ brand was refreshed in 2015 and the evidence showed use of the trade mark DELUCA’S on various packaged meals in the relevant non-use period. However, the delegate consider DELUCA’S was not substantially identical with the registered ‘by Delucas’ mark and so was not satisfied there was use of the registered mark in the relevant period.

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

 

Boohoo.com.UK Limited v Babyboo Fashion Pty Ltd [2020] ATMO 98 (2 June 2020)

Unsuccessful oppositions by Boohoo.com to trademark registration of BABYBOO and BABYBOO FASHION filed on 14 August 2017 for various goods and services in classes 18, 25 and 35.

The opponent relied on grounds of opposition under ss 42(b), 44, 59, 60 and 62A, but failed to establish any ground.

The opponent primarily relied on its prior trade mark registrations for BOOHOO and Australian reputation in the BOOHOO trade mark.

The applicant’s evidence disclosed Australian use of the trade mark BABYBOO (and BABY BOO) from 2011.

The s44 ground failed because the delegate did not consider the applied for marks to be substantially identical with or deceptively similar to any of the opponent’s registered BOOHOO marks.

Under s60, the delegate was satisfied the opponent’s BOOHOO mark had acquired an Australian reputation but, due to the differences in the respective marks, there was not a likelihood of deception or confusion.

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 s59 ground failed because the opponent’s evidence was insufficient to shift the onus on to the applicant to rebut the alleged lack of intention to use the applied for marks.

The opponent’s evidence was also insufficient to establish bad faith under s62A.

 

Deanna Campese v LASH HQ PTY LTD [2020] ATMO 99 (4 June 2020)

Successful opposition by Campese to trademark registration of LASH’D DOLL HOUSE filed on 5 May 2017 for various beauty care related services in class 44.

The applicant did not file any evidence and neither party participated in a hearing

The opponent prevailed under the s44 ground by relying on her prior registration for the trade mark LASH’D covering beauty products relating to eyelashes in class 3 and related implements in class 8. The delegate was satisfied the applicant’s services were closely related to the opponent’s registered goods and that the applied for mark was deceptively similar to the opponent’s registered LASH’D mark.

 

Chicago Mercantile Exchange Inc v Barry Taylor International Pty Ltd [2020] ATMO 100 (5 June 2020)

Successful opposition by Chicago Mercantile Exchange to trademark registration of the mark shown below filed on 25 September 2017 for various financial services relating to futures in class 36.

Trademark-Registration-Emini-watch- Logo

The opponent prevailed under the s60 ground by relying on its Australian reputation derived from use of its E-Mini mark since 1997 in relation a financial product which facilitates trading of a smaller fraction of an ordinary futures contract.

The delegate was satisfied the opponent’s E-Mini mark had acquired an Australian reputation for modified futures contract trading and that use of the applied for mark would be likely to deceive or cause confusion.

 

Sylka Limited v Fyber Flooring Pty Ltd [2020] ATMO 101 (5 June 2020)

Partly successful opposition by Sylka to trademark registration of NUSILK filed on 25 August 2017 for various floor coverings and wall hangings in class 27.

The applicant did not file any evidence and neither party participated in a hearing

The opponent established the s58 ownership ground by relying on prior use of the trade mark Nusilk for the same kind of goods as carpets, rugs, mats and matting.

The opponent also relied on grounds of opposition under ss 42(b), 59, 60 and 62A, but failed to establish any of those grounds.

The NUSILK mark was able to proceed to registration for “linoleum and other materials for covering existing floors, none of the aforementioned being carpets, rugs, mats or matting; wall hangings (non-textile)”.

 

Cell Therapies Pty Ltd [2020] ATMO 102 (9 June 2020)

This concerned an application for trademark registration of CELL THERAPIES filed on 12 June 2015 for various pharmaceutical related goods and services in classes 5, 40 and 42

The applicant was unable to overcome a distinctiveness objection raised during examination. The delegate considered the applied for CELL THERAPIES mark was not to any extent inherently adapted to distinguish the relevant goods and services. Further, the supporting evidence of use was insufficient to demonstrate the acquisition of distinctiveness in the broader market for the wide range of goods and services for which registration was sought.

The distinctiveness objection was not applicable to some of the applicant’s goods, specifically ‘pesticides; herbicides; fungicides and other agrochemicals’. However, it was not appropriate to amend the class 5 specification to such goods and so the application was refused in its entirety.

 

Kindred Management Group Pty Ltd v Geoffrey Joseph Anderson [2020] ATMO 103 (10 June 2020)

Unsuccessful opposition by Kindred Management to trademark registration of SPAGHETTI WESTERN CAFÉ’ & BAR filed on 4 May 2017 for café bar services in class 43.

The opponent relied on grounds of opposition under ss 43 and 58, but failed to establish either ground.

Under the s58 ownership ground the opponent relied on use of SPAGHETTI WESTERN ALWAYS GOOD. NEVER BAD. NEVER UGLY. However the delegate did not consider this combination word mark to be substantially identical with the applied for mark.

The s43 ground failed because the opponent was erroneously relying on confusion arising from another mark and there was no evidence of any inherently deceptive or confusing element in the applied for mark.

 

Urmila Investments Pty Ltd Atf Urmila Investments Trust v Freshii One LLC [2020] ATMO 104 (10 June 2020)

Unsuccessful opposition by Urmila Investments to an application under s92(4)(a) for removal of its trademark registration for Freshii Logo alleging lack of intention to use as at the 20 November 2014 filing date and no use up to 28 February 2018.

The trademark registration dated from 20 November 2014 and covered salads in class 29 and sandwiches in class 30.

The opponent’s evidence did not show an intention to use the mark at its filing date or any evidence of actual use during the relevant period.

The opponent’s assertion of intention to use was provided by its solicitor and that was contradicted in subsequent evidence. The evidence of use relied upon showed use in relation to supermarket services and not in relation to the registered goods.

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

 

Mirage Granito Ceramico SpA v Kittrich Corporation [2020] ATMO 105 (16 June 2020)

Unsuccessful opposition by Mirage Granito Ceramico to trademark registration of CON-TACT filed on 9 June 2017 for synthetic floor tiles in class 19

The opponent relied on grounds of opposition under ss 44 and 59, but failed to establish either ground.

Neither party filed evidence or filed submissions.

Since there was no evidence, the s59 ground failed.

The s44 ground was based upon the opponent’s reliance on its prior registration for CONTRACT by MIRAGE Logo in class 19 as particularised in the Statement of Grounds and Particulars. However, the delegate did not consider the applied for mark to be deceptively similar to this registered mark and so the s44 ground failed.

 

Zillow Inc. v Zillo & Co Pty Ltd [2020] ATMO 106 (18 June 2020)

Unsuccessful opposition to trademark registration of ZILLO + HUTCH (Stylised) filed on 15 September 2017 for furniture in class 20 and indoor 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 applicant did not file any evidence or participate in the hearing.

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.

 

Fuji Television Network Inc v Iron Chef Pizza Pty Ltd [2020] ATMO 107 (18 June 2020)

Unsuccessful opposition by Fuji Television Network to trade mark registration of IRON CHEF filed on 19 April 2016 for services in classes 39 and 42 relating to the ordering and delivery of food and drink.

The opponent relied on grounds of opposition under ss 42(b), 44, 58, 60 and 62A, but failed to establish any ground.

The opponent first used the IRON CHEF trade mark in Japan for a cooking television series which premiered in 1993 and was broadcast in Australia between 2003 to 2014. An Australian edition of this program was produced and broadcast in 2010. The opponent has various Australian trademark registrations for IRON CHEF covering a range of goods and services including restaurant and café services in class 43,

The s44 ground failed because the delegate did not consider any of the applicant’s services to be similar or closely related to the goods/services covered by the opponent’s prior registrations.

The s58 ownership ground failed because the delegate did not consider the applicant’s services to be the same kind of thing as the services for which the IRON CHEF mark had been used in Australia.

Under s60, the delegate was satisfied the opponent’s IRON CHEF mark had acquired a moderate Australian reputation for television cooking shows. However, the evidence did not demonstrate the opponent has a propensity towards brand extension or anything to indicate consumers would conclude the applicant’s services are a natural extension of the opponent’s services. The delegate characterised the relevant target audience as viewers of television cooking shows which comprises a wide demographic of the Australian population. The delegate considered it unlikely for there to be a real risk of confusion. An ordinary Australian consumer would not be caused to wonder whether the applicant’s services originate from the same trade source as that of the television show of the same name.

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.

There was no cogent evidence to support the s62A bad faith ground. Rather, the opponent was relying on inference and wrongly attempting to put the onus on the applicant to demonstrate good faith.

 

Jaguar Land Rover Limited v Danteng Pty Ltd [2020] ATMO 108 (19 June 2020)

Successful opposition by Danteng to applications for removal of its trademark registrations for SVA and SVA (Stylised) alleging non-use during the 3 years period ending on 13 June 2016.

The trademark registrations dated from 20 March 2009 and covered various vehicles in class 12 and custom manufacturing services in class 40.

The supporting evidence disclosed use of the SVA marks during the relevant period. Jaguar contended this was not evidence of a trade in vehicles, rather it showed used in relation to the fabrication and supply of component parts of heavy vehicles. However, the delegate rejected Jaguar’s contention.

The delegate also exercised discretion in favour of the opponent and directed the SVA trade marks to remain on the Register in their entirety.

 

Long Way Home Holdings Pty Ltd v Saroo Brierley Enterprises Pty Ltd [2020] ATMO 109 (23 June 2020)

Unsuccessful opposition by Long Way Home Holdings to trademark registration of LION filed on 5 October 2017 for various entertainment services relating to shows and theatres in class 41.

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

The opponent is part of the See-Saw group which is a leading Australian independent film and television production business. One of its successful productions was the film LION in 2016.

The applicant is connected with the person, Saroo Brierley, the subject of this film who lost contact with his family in India as a five year old boy, was adopted by Sue and John Brierley and grew up in Tasmania and, after 25 years, was reunited his mother in India in 2002. He wrote his memoir which was published by Penguin in 2013 under the title ‘A Long Way Home’ and asserted that he retained theatrical copyright rights. When being reunited with his mother, he was informed that his true birth name was “Sheru” which means Lion in Hindi. Saroo was the phonetic equivalent of Sheru.

A critical issue was whether LION, when used to refer to the film, was functioning as a trade mark or merely as an indicator of artistic, rather than commercial, origin. Reference was made to the European DR NO case which found that the movie title indicated artistic origin and not a trade mark. The delegate regarded this as a highly relevant precedent.

Given the finding that the opponent had not used LION as a trade mark, the grounds of opposition under ss 58 and 60 necessarily failed.

Under s42(b), the opponent alleged that use of the applied for mark would be misleading or deceptive and contrary to the Australian Consumer Law and/or constitute passing off. These actions are based on reputation, but do not require reputation in a trade mark. Nonetheless, the delegate dismissed this ground. The evidence did not satisfy the delegate that the indicium LION, used as the title of a film, is associated by consumers with the opponent. Indeed, the delegate commented that “if there is any association in the minds of the public between the title of the film Lion and an entity, that entity seems likely to be Saroo Brierly.”

The s62A bad faith ground also failed. The delegate considered it quite natural (rather than unscrupulous, underhand or unconscientious) for the applicant to file the LION trade mark application to protect its position.

 

Warrior Australia Pty Ltd v Warrior Sports Inc [2020] ATMO 110 (25 June 2020)

Partly successful opposition by Warrior Australia to applications for removal of its trademark registrations for WARRIOR alleging non-use during the 3 years period ending on 3 December 2017.

The trademark registrations dated from 17 October 1983 and covered various sporting equipment in class 28 and clothing in class 25.

The removal applicant was seeking to restrict these registrations by excluding goods relating to hockey, ice hockey or lacrosse.

The opponent’s evidence disclosed use of the WARRIOR mark during the relevant period for a limited range of goods in classes 28 and 25, primarily connected with martial arts.

When considering discretion, the delegate was of the view that the goods for which the WARRIOR mark had been used were similar to goods for use in hockey, ice hockey and lacrosse. Hence, the limitations requested by the removal applicant were not appropriate. However, it was also not appropriate to leave the marks on the Register for all the registered goods, so the delegate restricted the specifications to be in keeping with the goods for which use had been shown.

 

Phillbourne Pty Ltd v IP Machinery Pty Ltd [2020] ATMO 111 (25 June 2020)

Unsuccessful opposition by Phillbourne to trademark registration of the composite mark shown below filed on 17 October 2017 for various agricultural machines and equipment in class 7.

Trademark-Registration-Turbodrum-Logo

The opponent relied on grounds of opposition under ss 43, 58 and 62A, but failed to establish any ground.

The opponent manufactures and sells agricultural pick up machines that collect and feed cut crops into the thresher of harvesters. From around August 2016, at the request of the applicant, the opponent designed and manufactured a custom feed drum for specific combine harvesters. They agreed upon the name TURBODRUM and the first sale was in December 2016.

Under the s58 ownership ground, the delegate characterised the term ‘turbodrum’ as descriptive and the applied for mark was not substantially identical with this plain word.

The opponent asserted use of a mark which reproduced the applied for mark with the addition of the words “Manufactured by Phillbourne”. This was substantially identical with the applied for mark. However, the delegate was not satisfied the evidence disclosed earlier use of this mark by the opponent and so this ground failed.

The commercial arrangements between the applicant and opponent deteriorated, but the delegate was not satisfied that, at the filing date, the applicant’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons, and so the s62A bad faith ground also failed.

The s43 ground failed because the opponent was not relying on confusion arising from any inherently deceptive or confusing element in the applied for mark.

 

Adrian Moses v Matutino Films Pty Ltd [2020] ATMO 112 (26 June 2020)

Successful opposition by Moses to trademark registration of THE WORLD CUP OF FILM filed on 17 November 2017 for a broad range of entertainment services in class 41.

The opponent prevailed under the s58 ownership ground.

The applicant did not file any evidence or submissions.

The opponent’s evidence disclosed use from October 2015 of the identical mark for various entertainment services relating to a film making competition. A director of the applicant worked with the opponent on the development of this project from December 2016 to September 2017 when the business relationship ended due to disagreements. The opponent’s services were the same kind of thing as many of the applicant’s services.

However, the applied for mark also covered other services which could not be characterised as the same kind of thing as those for which the ownership ground was established, so the delegate had to consider other grounds of opposition under ss 42(b), 60 and 62A but found against the opponent on each of those other grounds.

Nonetheless, the delegate considered it inappropriate to carve out some services from the application and rejected it in its entirety.

 

Camatic PL v AMS Group 1 Pty Ltd ATF the AMS Unit Trust and AMS Group 2 Pty Ltd as trustee for The Blueprint Family Trust [2020] ATMO 113 (26 June 2020)

Successful opposition by Camatic to an application for removal of its trademark registration for QUANTUM alleging non-use during the 3 years period ending on 28 October 2017.

The trademark registration dated from 8 October 2008 and covered various furniture in class 20.

The removal application did not extend to ‘stadium, arena, theatre, cinema, auditorium, lecture theatre and public venue seats and chairs’.

The delegate was satisfied the opponent’s evidence disclosed use of the QUANTUM mark for a range of seating, primarily for commercial use, but which could also be used for domestic applications. Rather curiously, the delegate also considered such use for a wide variety of seating to constitute use of the mark for the general claim to ‘furniture’ and sufficient to retain the QUANTUM mark on the Register in its entirety.

 

LG Electronics Inc v Samsung Electronics Co Ltd [2020] ATMO 114 (29 June 2020)

Unsuccessful opposition by LG Electronics to trademark registration of SAMSUNG QLED filed on 21 October 2016 for various television goods and smartphones in class 9.

The opponent relied on grounds of opposition under ss 42(b), 43, 44 and 62A, but failed to establish any ground.

Under s43 the opponent argued that QLED was a generic abbreviation for ‘Quantum Light Emitting Diode’ and that use of the applied for mark would be likely to deceive or cause confusion because the applicant does not use QLED technology in its screens and panels. However, this failed because there is no specific and primary meaning associated with the term QLED that limits it to a particular screen display technology. The delegate was satisfied the applicant is appropriately using this term on goods which employ quantum dots and are a technology which fall within the umbrella term QLED.

Under s44 the opponent relied on its prior trademark registration for QLED covering various software (including for television), remote controls, wristbands and electronic publications. Curiously, the delegate found that SAMSUNG QLED was not deceptively similar to QLED and did not resort to the notoriety of the SAMSUNG mark to reach that conclusion.

Under s42(b) the opponent primarily contended that use of QLED for goods which did not conform to the definition relied upon under s43 would be a misrepresentation likely to mislead or deceive consumers under the Australian Consumer Law. However, given the delegate’s finding under s43, this ground necessarily failed as well.

There was no cogent evidence to support the s62A bad faith ground.

 

Enterprise Above & Beyond Pty Ltd v Queensland Rugby Football League Limited [2020] ATMO 115 (29 June 2020)

Unsuccessful opposition by Enterprise Above & Beyond to trademark registration of MAROONS filed on 23 March 2016 (being a divisional of an earlier application with a priority date of 16 September 2013) for clothing, footwear and headgear in class 25.

The opponent relied on grounds of opposition under ss 41, 42(b), 43, 44, 58 and 62A, but failed to establish any ground.

The opponent owns a 2005 trademark registration for MAROONS WORKWEAR and a 2014 registration for MAROONLAND in class 25. It was a former distributor of the applicant selling State of Origin merchandise, but its evidence was lacking in detail as to use of these registered marks.

The applicant has been involved with the State of Origin rugby league series which commenced in 1980. Various licensed merchandise bearing MAROONS, Queensland Maroons and/or QLD Maroons Team has been sold as part of this series.

Under the s41 ground, the delegate characterised the applied for MAROONS mark to have some degree of inherent distinctiveness which, when combined with the applicant’s use over the years, was sufficient to qualify for registration.

Under s44, the delegate considered the applied for MAROONS mark to be at least deceptively similar to the opponent’s registered MAROONS WORKWEAR mark. However, the applicant could rely on prior continuous use of the MAROONS mark under s44(4) to overcome this objection.

The s58 ownership ground failed because the opponent’s evidence did not show use of a substantially identical mark before use of MAROONS by the applicant.

Under s42(b) the opponent alleged that use of the applied for MAROONS mark would be misleading or deceptive and contrary to the Australian Consumer Law. However, the evidence relied upon was insufficient to show the Opponent’s reputation and, given the applicant’s longstanding use of MAROONS, the delegate considered the opponent has not discharged its onus.

The s43 ground failed because the opponent was erroneously relying on the reputation of its marks and not confusion arising from a connotation in the applied for MAROONS mark.

There was no cogent evidence to support the s62A bad faith ground.

 

Innovare Pty Ltd v Zikos Holdings Pty Ltd [2020] ATMO 116 (30 June 2020)

Successful opposition by Innovare to trademark registration of INNOVARE filed on 11 June 2018 for business project management services in class 35 and construction management services in class 37.

The opponent also attempted to file some additional evidence after the hearing, but it was not considered.

The opponent prevailed under the s60 reputation ground and relied on use, since 1997, of the Innovare mark through use of Innovare Builders and the Logo shown below for various building projects including commercial fit-outs and residential constructions.

Trademark-Registration-Innovare-Logo

The applicant relied on use of the INNOVARE trade mark since 2004 in the project management and commercial office fit-out industry.

The opponent’s ownership claim was complicated by a broken chain of title. The first user of the Innovare mark was Mr D’Arro who seeming transferred his rights to a related company which subsequently went into liquidation in 2009 without any transfer of rights to any other entity.

Nonetheless, under s60, the opponent was able to rely on its own use of the Innovare mark from when it was incorporated in December 2013, being some 4.5 years prior to filing of the opposed mark. The delegate was satisfied the opponent had acquired a limited, but sufficient, reputation in Australia for commercial fit-out and related services. Further, the delegate was satisfied as to the likelihood of confusion, particularly given the respective marks and services were essentially identical. Indeed, the opponent’s evidence included one actual instance of confusion.