Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – June 2021

Wild Environmental Consultants Pty Ltd v Wildplan Pty Ltd [2021] ATMO 46 (1 June 2021)

Unsuccessful opposition by Wild Environmental to trademark registration of wildPLAN filed on 19 March 2019 for various services in classes 35, 42 and 45, particularly relating to town and social planning.

The opponent relied on grounds of opposition under ss 43, 44 and 58A but failed to establish any ground.

The opponent has, since January 2016, provided environmental consulting services under the WILD ENVIRONMENTAL trade mark. This trade mark has been registered since 13 October 2017 but is owned by Milford Baker Pty Ltd and the evidence did not indicate the connection between the opponent and this company.

The s44 ground failed because the delegate did not consider the applied for wildPLAN mark to be substantially identical with or deceptively similar to the registered WILD ENVIRONMENTAL mark.

The s58 A ground was not applicable because the wildPLAN mark was not accepted under s44(4).

The s43 ground also failed because the opponent was wrongly relying on the reputation of the WILD ENVIRONMENTAL mark and s 43 is directed to deception or confusion arising from something in the applied for mark itself.

A.D. Padmasingh Isaac trading as Aachi Spices and Foods v Ragopika Pty Ltd [2021] ATMO 47 (4 June 2021)

Successful opposition by A.D. Padmasingh Isaac to trademark registration of AACHI INDIAN CUISINE filed on 22 February 2018 for restaurant and fast food outlet services in class 43.

The opponent prevailed under s60 by relying on the Australian reputation of the AACHI trade mark, primarily in relation to the marketing and sale of Indian food products in Australia since 2008.

The delegate concluded:“Having regard to the Opponent’s reputation in its trade marks, the similarity of the competing trade marks, both literally and conceptually, and the similarity of the goods and services in relation to how they are used, I am satisfied that relevant consumers will be caused to wonder if there is some connection between the Applicant’s Services and the South Indian food products and cuisine for which the Opponent has acquired a reputation under its AACHI trade marks.”

Mohammad Hashim Tajir Surma v Oasis Corporation Australia Pty Ltd [2021] ATMO 48 (8 June 2021)

Successful opposition by Mohammad Hashim Tajir Surma to trademark registration of Hashmi & Device filed on 25 January 2019 for various cosmetic products in class 3.

The opponent prevailed under the s62A bad faith ground.

The applicant was previously an Australian distributor for the opponent’s Hashmi products which were imported from Pakistan. The delegate had no hesitation in finding bad faith.

Bega Cheese Limited v Vincenzo Fasanella [2021] ATMO 49 (10 June 2021)

Successful opposition by Bega Cheese to trademark registration of BUTTERMITE filed on 27 February 2018 for various butter and dairy spreads in class 29.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its VEGEMITE trade mark acquired as part of the acquisition of the Mondelez grocery business in 2017. The VEGEMITE yeast spread product is well known and has been sold in Australia since 1923 by the opponent and its predecessors in title.

The Applicant contended the suffix MITE is used by several other food producers of yeast spreads such as Promite, Marmite, Aussiemite, MightyMite, and Ozemite. However, the delegated noted that what sets apart the opponent’s VEGEMITE mark is the opponent’s tendency to play around with the brand, using the suffix MITE(Y) in several contexts to refer to use of VEGEMITE as an ingredient, as in the Baker’s Delight CHEESYMITE SCROLL or the opponent’s MITEY recipes collection.

The delegate was satisfied that consumers are likely to conclude that the applied for BUTTERMITE mark is used by, or under the auspices of, the opponent.

Bang Bang Investment Pty Ltd v BJBAC 3 Pty Ltd [2021] ATMO 50 (11 June 2021)

Reasons unavailable

Brightwater Care Group [2021] ATMO 51 (11 June 2021)

The applicant was able to overcome an objection raised during examination of its application for trademark registration of BRIGHTWATER filed on 13 September 2017 for various real estate management related services in class 36 and aged care related services in classes 43 and 44.

The examination objection was based on the geographical significance of BRIGHTWATER because Brightwaters is a place name in New South Wales, being a suburb of the City of Lake Macquarie which is known as both a tourist and retirement destination.

The delegate considered that it is reasonable to suppose that services of the kind provided by the applicant may be provided in Brightwaters in the future. However, the delegate was satisfied the evidence disclosed the applicant’s use of the BRIGHTWATER mark since 2002 and the extent of this use eclipsed the primary significance of Brightwaters as a place name.

The BRIGHTWATER application was ultimately accepted for an amended specification.

Action North America Inc v Aobao International Pty Ltd [2021] ATMO 52 (15 June 2021)

Partly successful opposition by Action North America to trademark registration of ‘pwonly’ filed on 22 April 2016 for engines in class 12 and retailing of motorcycles and their parts and accessories in class 35.

The opponent owned an Australian trade mark registration for PW ONLY covering, inter-alia, retailing of motorcycle components and engine parts. The applicant had previously opposed that registration but was unsuccessful with the delegate finding the opponent was the owner of the PW ONLY mark.

The s58 ownership ground was upheld for “retailing of motorcycle parts and accessories” with the opponent relying on use of its PW ONLY mark in Australia from 2006 for these services.

The delegate did not regard retailing of motorcycles to be the same kind of thing as retailing of motorcycle parts and accessories.

The applicant tried to rely on honest concurrent use under s44(3)(a), but the delegate noted that s58 is an independent ground of opposition and s44(3)(a) does not apply to s58.

The applicant also argued that there was no evidence of use of the opponent’s PW ONLY mark in Australia after 2008 and that the opponent had abandoned this mark. However, the delegate noted that abandonment is a question of fact and should not be inferred from mere non-use of a trade mark. There was no evidence to support the opponent having formed an intention to abandon its PW ONLY mark in Australia.

Finally, the applicant argued the opponent had acquiesced to use of the ‘pwonly’ mark and should be prevented from asserting ownership, but the delegate rejected this.

The delegate went on to consider other grounds of opposition under ss42, 44, 58A, 60 and 62A for the remainder of the applicant’s claimed goods and services, but rejected each of those grounds.

The result was that the applicant’s claim in class 35 was amended to “retailing of motorcycles and motorcycle parts and accessories (by any means).

Instagram LLC v Instagoods Pty Ltd [2021] ATMO 53 (16 June 2021)

Successful opposition by Instagram to trademark registration of Instadate filed on 14 September 2018 for software for retail in class 9 and retail services in class 35.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its INSTAGRAM  trade mark for its photo and video sharing platform, as well as brand extensions such as INSTAMEET and INSTAGRAM SHOPPING.

The applicant’s Instadate trade mark was primarily directed to a web and mobile dating application, the retail function was ancillary to this.

The delegate was satisfied that the reputation of INSTAGRAM went beyond an app which allows users to share photos and videos and extends at least as far as marketing and retail services, as well as to events connecting users of the app in a physical environment. The delegate noted that ‘insta’ has a meaning ‘indicating instant or quickly produced’ and in many contexts ‘insta’ will retain that meaning. Nonetheless, and increasingly over time, ‘insta’ has come to be used as a reference to the opponent’s app and activities or people associated with it.

The delegate concluded that the applied for mark is “concerned with goods and services for which the INSTAGRAM trade mark has a reputation. Given it is used in the contexts of software for retail and retail services, I consider it likely that the INSTA prefix in INSTADATE will, at the very least, cause a significant number of consumers to wonder whether the Applicant’s goods and services come from the Opponent or are sponsored or licensed by the Opponent”.

Raven Products Pty Ltd v ASSA ABLOY Australia Pty Limited [2021] ATMO 54 (22 June 2021)

Unsuccessful opposition by Raven Products to an application for removal of its trademark registration for PEMKO alleging no good faith use in the 3 years period ending 20 November 2019.

The registration dated from 14 August 1996 and covered various goods in classes 6 and 17.

The opponent contended the PEMKO mark was used on the website of DTAC for two products, namely stair treads and edging, as well as anti-slip tapes.

The delegate accepted the evidence supported use of the PEMKO mark for these goods, but only anti-slip tapes fell within the scope of the class 17 goods covered by the registration. However, the opponent’s evidence did not explain the connection between it and DTAC and so the delegate was not satisfied this use was authorised by the opponent.

The delegate rejected the opponent’s attempts to introduce new evidence at a late stage and also found no basis for a favourable exercise of discretion. Hence, the delegate directed the PEMKO mark to be removed from the Register.

Winter Holding GmbH & Co KG v SASS Clothing Pty Ltd [2021] ATMO 55 (28 June 2021)

Unsuccessful opposition by Winter Holding to trademark registration of BETTY BASICS (Stylised) filed on 26 October 2018 for various apparel in class 25.

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

Under s44, the opponent relied on its prior registrations and an application for various trade marks containing or consisting of BETTY BARCLAY, but the delegate did not consider the applied for BETTY BASICS mark to be substantially identical with or deceptively similar to any of these prior marks.

The s58A ground was not applicable because the BETTY BASICS mark was not accepted under s44(4).

SASS Clothing Pty Ltd v Winter Holding GmbH & Co KG [2021] ATMO 56 (28 June 2021)

Unsuccessful oppositions by SASS Clothing to trademark registration of BETTY BARCLAY (in plain word and stylised forms) filed on 29 May 2018 and 24 September 2018 for various goods in classes 3, 18 and 25.

The opponent relied on grounds of opposition under ss 42(b), 43, 58, 60 and 62A but failed to establish any ground.

These oppositions were heard together with the above opposition to the BETTY BASICS mark.

The opponent primarily relied on use and reputation of its BETTY BASICS mark since 2015 for women’s apparel and accessories.

The s60 ground failed because the delegate was not satisfied the opponent’s BETTY BASICS mark had acquired a relevant Australian reputation.

The opponent also relied on the reputation of its BETTY BASICS 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.

The s58 ownership ground failed because the delegate did not consider the opponent’s BETTY BASICS mark to be substantially identical to the applied for BETTY BARCLAY marks.

The 62A bad faith ground failed as the evidence did not establish the applicant sought to misappropriate or take advantage of the opponent’s goodwill, or that its actions fell short of proper standards.

The s43 ground failed because there was no evidence that the applied for BETTY BARCLAY marks contained any connotation likely to deceive or cause confusion.

Xiaomei Wang v Aurinda Pty Ltd [2021] ATMO 57 (29 June 2021)

Unsuccessful opposition by Xiaomei Wang to an application for removal of her trademark registration for AURINDA alleging no good faith use in the 3 years period ending 4 June 2019.

The registration dated from 27 April 2012 and covered various dietary supplements in class 5.

The opponent contended the AURINDA trade mark had been used under licence since January 2017 by an Australian manufacturer for export to China and relied on invoices from this manufacturer. However, the licence agreement was not in writing and active control over use of the AURINDA trade mark could not be corroborated.

The delegate found no basis for a favourable exercise of discretion and directed the AURINDA mark to be removed from the Register.

Seven Network (Operations) Limited v 7 Eleven Inc [2021] ATMO 58 (30 June 2021)

Unsuccessful opposition by Seven Network to an application for removal of its trademark registration for 7NOW alleging no good faith use in the 3 years period ending 10 June 2019.

The registration dated from 13 February 2013 and covered various goods and services in classes 9, 35, 38 and 41.

The opponent is one of five main free-to-air television networks in Australia. In addition to its prime Channel 7, it also has digital broadcast channels, 7HD, 7TWO, 7mate, 7flix, 7food network (1 December 2018 – 28 December 2019) and racing.com, as well as digital BVOD (broadcast video on demand) service www.7plus.com.au and digital news platform www.7news.com.au.

Much of the opponent’s evidence related to its domain name 7now.com.au which, from 24 July 2018 to 31 March 2019, redirected to its 7plus.com.au domain name and, from 1 April 2019, that domain name resolved to a single web page displaying a logo version of the 7Now mark as well as content promoting the opponent’s various channels and programs. There was no evidence that the 7NOW mark appeared on the website hosted at the 7plus.com.au domain.

The opponent relied on Edegtech International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281, while the removal applicant relied on Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565.

The delegate agreed with the removal applicant that there was no use of the 7NOW mark during the relevant redirection period.

The evidence relied upon for showing use of the 7NOW mark, from 1 April 2019, by virtue of the 7now.com.au domain name resolving to the single web page with its own content was a screenshot taken on 25 February 2020 which was after the relevant non-use period, but there was nothing to corroborate this screenshot reflected the situation during the relevant period.

Consequently, the delegate was not satisfied the 7NOW mark had been used during the non-use period.

When considering discretion, the delegate considered the presence of the 7NOW logo on the web page reached from the 7now.com.au domain name from 1 April 2019 reflected the opponent advertising its own programs and could not be construed as providing advertising services to others. The 7NOW Logo appeared above a grid of other hyperlinked Logos/Icons for the opponent’s other channels. However, the delegate was not satisfied that, in this context, use of the 7NOW logo on the 7NOW content page constitutes use of the 7NOW logo in connection with the services offered at the linked pages.

The delegate found no basis for a favourable exercise of discretion and directed the 7NOW mark to be removed from the Register.

CSR Building Products v Saint-Gobain construction Products UK Ltd [2021] ATMO 59 (30 June 2021)

Successful opposition by CSR to trademark registration of GYPFRAME filed on 24 December 2018 for various building materials in class 6.

The opponent prevailed under the s60 ground by relying on the reputation of its GYPROCK mark which has been used in Australia since 1947 in relation to various gypsum based building and construction products such as plasterboard and cornice as well as various finishing materials and accessories including metal framing and fixing devices.

The delegate was satisfied the GYPROCK mark had acquired a significant Australian reputation and it is likely that the wide range of persons in the target market for the relevant goods, on seeing the GYPFRAME mark, would at least be caused to wonder whether it is associated with the opponent or is one of its brand extensions.