Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – March 2019

Gadesa Trading Pty Ltd [2019] ATMO 30 (1 March 2019)

An application for an extension of time to file an opposition to a removal application was refused. The relevant Fone Fix trade mark had been removed from the Register on 9 January 2018 and the extension was requested on 24 August 2018.

The relevant trade mark had previously been transferred to a new owner in June 2013, but that change of ownership was not recorded with IP Australia. Correspondence had been sent to the former owner’s PO Box which was no longer in use.

The extension was sought by the former owner. However, the delegate found no error or omission, or circumstances beyond the control  of that person which could justify the extension the extension.

 

Houzz Inc v Uhomzz Network Technology Co Ltd [2019] ATMO 31 (6 March 2019)

Successful opposition by Houzz to trademark registration of the Uhouzz logo mark shown below filed on 27 October 2015 for various goods and services in classes 9, 35, 36, 39, 41 and 43

Trademark-Registration-Uhouzz-Logo

The opposition was upheld under the s60 ground with the opponent relying on the likelihood of confusion arising from its Australian reputation acquired through use since 2009 of its Houzz trade mark in connection with an online platform for home remodelling/renovation, architecture, interior design and decorating, landscaping and home improvement.

 

Societe des Produits Nestle SA v Candido Vinuales Taboalda [2019] ATMO 32 (7 March 2019)

Successful opposition by Nestle to trade mark registration of NESPORT filed on 18 April 2016 for various nutritional foodstuffs and other foods and beverages in classes 5, 30 and 32.

The opposition was upheld under the s60 ground with the opponent relying on the likelihood of confusion arising from its Australian reputation acquired through use of NESTLE and a family of NES- formative marks including NESCAFE, NESPRESSO, NESTEA and NESQUIK.

 

Mr Car Keys Pty Ltd v Paul John Jones [2019] ATMO 33 (7 March 2019)

Successful opposition by Mr Car Keys to trade mark registration of the Mr Auto Keys Logo shown below filed on 11 August 2016 for encoded keys in class 9 and cutting of keys in class 40.

Trademark-Registration-Mr-Auto-Keys-Logo

The opposition was upheld under the s62A bad faith ground for similar reasons as those reported in the related decision dated 16 April 2018 reported here .

 

166052400 Pty Ltd v Bundaberg & District RSL & Citizens Memorial Club [2019] ATMO 34 (7 March 2019)

Unsuccessful oppositions by 166052400 Pty Ltd to applications for removal of its various trademark registrations for SANDHILLS FISHING CLUB Logo, BUNDABERG SPORTS CLUB Logo, SANDHILLS SPORTS CLUB Logo and BUNDABERG SERVICES CLUB Logo alleging the registered owner had no intention to use any of these marks at the time they were filed in July 2016 and no actual use of any of these marks up to 28 May 2017  for all the registered services in classes 41 and 43.

The opponent company was deregistered on 2 March 2018, but that fact was not given much significance. Nonetheless, its evidence was very brief and uncorroborated. The delegate did not consider it sufficient to demonstrate a “good faith” intention to use any of the relevant registered marks. The Managing Director of the opponent became  a member of the removal applicant Club in 2014 and there were striking similarities between the opponent’s registered marks and those already being used by the removal applicant. The opponent, by inference, was aware of the earlier use of those marks by the removal applicant.

The delegate referred to the Federal Court case of Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 where Gordon J commented, by way of obiter dicta, that good faith for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes and it does not involve any element of honesty or subjective good intentions. However, the delegate distinguished that case because the opponent here did not provide any evidence of a good faith intention to use the relevant trade marks for trading purposes. The delegate also referred to the Optical 88 case [2010] FCA 1380 where Yates J noted it is up to the opponent to rebut the allegation of absence of intention, but considered the evidence relied upon was sparse and insufficient to show such an intention. The delegate considered the removal applicant’s evidence required an answer form the opponent, but the opponent’s evidence was not enough and it failed to defend the removal applications.

 

Bluescope Steel Limited v Spanline Weatherstrong Building Systems Pty Ltd [2019] ATMO 35 (7 March 2019)

Successful opposition by Bluescope to an application for trademark registration for the shape of a metal roofing sheet as shown below filed on 28 January 2015 for metal roofing materials in class 6.

Trademark-Registration-Shape-Roof-Cladding

The opposition was upheld under the s41 distinctiveness ground.

The delegate considered this case fell under s41(3) and was influenced by the fact that the shape of the roof cladding is due to the functional aspects and improvements it provides over other types of roof cladding. The design of the roof cladding was not something that the applicant came up with to act as a badge of origin for their goods, the shape was incidental and a byproduct of functional engineering benefits it provided. The ‘double u’ shape of the goods is a functional rather an aesthetic feature.

The delegate then went on to consider the applicant’s evidence and did not believe there is enough evidence which establishes that the applied for is acting as a badge of origin, on its own, for the applicant’s goods. The majority of the examples of advertising emphasise the functional aspects given to the roof cladding due to its shape. There were also other trade marks such as SPANLINE and DOUBLE-U being closely used in conjunction.

 

Shambles Communications Pty Ltd and Gareth Eden Styche v Kelli Johnson [2019] ATMO 36 (13 March 2019)

Unsuccessful opposition by Shambles and Eden-Styche to trademark registration of Bean Besties Logo as shown below filed on 5 May 2016 for pillows in class 20 and soft toys in class 28.

Trademark-Registration-Bean-Besties-Logo

The opponents relied on grounds of opposition under ss43 and 44, but failed to satisfy the delegate on either ground.

Under the s44, reliance was placed on a prior registration for BESTIE BABIES covering playthings in class 28 owned by Shambles, but the delegate did not consider the applied for mark was deceptively similar to this registered mark.

The s43 ground also failed as the opponents were really seeking to allege confusion arising from similarity with the prior BESTIE BABIES registered mark, rather than from some secondary meaning inherent in the applied for mark.

 

Aqua Smiles Dental Pty Ltd [2019] ATMO 37 (13 March 2019)

The applicant was unable to overturn revocation of acceptance of its applications for trademark registration of AQUA SMILES and AQUA SMILES Logo filed on 26 July 2018 for dental surgery services in class 44.

During examination, prior registrations for AQUA DENTAL covering dental services were considered but not raised as objections. However, the delegate considered the applied for marks were deceptively similar to these registered marks and the applicant’s evidence was insufficient to support honest concurrent use. In all the circumstances that existed when the applications were considered for acceptance, they should not have been accepted it was reasonable to revoke acceptance under s38.

 

Lifestyle Equities CV v Continental Shelf 128 Limited [2019] ATMO 38 (19 March 2019)

Unsuccessful opposition by Lifestyle Equities to trade mark registration of the SANTA MONICA POLO CLOB Logo shown below file don 26 October 2016 for goods in classes 3 and 18.

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

The opponent relied on grounds of opposition under s44, 60, 42(b) and 62A, but failed to satisfy the delegate on any ground.

Under the s44, s60 and s42(b) grounds, the opponent relied on use and registration of its BEVERLY HILLS POLO CLUB Logo mark shown below:

Trademark-Registration-Beverly-Hills-Polo-Club-Logo

The s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to the opponent’s registered mark.

Under the s60 ground, the delegate characterised the reputation of the opponent’s mark in Australia as being quite modest and in relation to upmarket clothing and footwear, bags and luggage, and scents, aftershaves, perfumery etc for men and women which are primarily sold via websites on the Internet. Given this modest reputation and the comparatively low degree of similarity between the respective marks, the delegate did not consider there to be a likelihood of confusion.

The opponent also relied on the reputation of its 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.

Under the s62A bad faith ground, the opponent relied on prior correspondence between the parties, particularly a ‘without prejudice’ letter where there was an undertaking given by the applicant. However, that did not relate to the applied for mark and bad faith could not be established.

 

Steven Kelly v Pattor Pty Ltd [2019] ATMO 39 (19 March 2019)

Unsuccessful opposition by Kelly to trademark registration of Frappe (stylised) shown below filed on 2 April 2015 for food and drink services in class 43.

Trademark-Registration-Frappe-Stylised

The opponent relied on its two prior registered marks shown below dating from December 2014 and covering similar class 43 services.

Trademark-Registration-Frappe-Woman-Logo

Trademark-Registration-Frappe-Woman-Cafe-Bar-Logo

While there was a valid objection under s44(2), the applicant was able to traverse this by relying on s44(4) prior continuous use from May 2011 initially in connection with a  restaurant/café bar at Earlwood, NSW and subsequent expansion to other restaurants/café bars in Crows Nest, NSW in June 2014 to April 2016 and in Concord, NSW from December 2014 .

 

Buddi Limited v Le Vise Products LLC [2019] ATMO 40 (21 March 2019)

Unsuccessful opposition by Buddi to trademark registration of Buddy Tag filed on 15 July 2015 for electronic devices for locating and tracking children in class 9.

The opponent relied on grounds of opposition under ss42(b), 58 and 60, but failed to satisfy the delegate on any ground.

As a procedural matter, the opponent’s evidence in reply was allowed even though much of it was not strictly in reply to the applicant’s evidence in answer.

The applicant first use the Buddy Tag mark in Australia on 20 October 2013.

The opponent relied on use of its BUDDI trade mark for electronic monitoring systems and devices. The BUDDI mark had been used in the UK from 2004 and in Australia as early as 2012.

The s58 ownership ground failed because the opponent’s goods were directed to deterrence and community protection, whereas the applicant’s goods were for loss prevention and personal safety. The delegate considered these goods were not the same kind of thing.

The s60 ground failed because the delegate was not satisfied the opponent’s evidence demonstrated a sufficient Australian reputation as at 15 July 2015.

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

 

Comite International Olympique v Tempting Brands Netherlands BV [2019] ATMO 41 (25 March 2019)

Successful opposition by the IOC to trademark registration of Pierre de Coubertin filed on 21 December 2015 for various goods in classes 3, 9, 14, 18, 25 and 28.

The opponent prevailed under the s43 ground. Pierre de Coubertin is the name of the founder of the International Olympic Committee (IOC) and hence the applied for mark contains a connotation such that its use would be likely to deceive or cause confusion.

The delegate was satisfied that the opponent had established Pierre de Coubertin (the person) has a significant reputation which connects him to the opponent and that use of the applied for mark would be likely to, at least, cause purchasers to wonder whether the applicant’s goods are in some way sponsored or approved by the opponent.

 

Southcorp Brands Pty Limited v Li Li Shen [2019] ATMO 42 (26 March 2019)

Successful opposition by Southcorp to trademark registration of Barry Ford and Ben Ford filed on30 March 2017 and 26 April 2017 respectively for alcoholic beverages in class 33.

The applicant did not file any evidence and the opposition was upheld under the s62A bad faith ground.

The opponent’s evidence showed the applicant’s use of Barry Ford in close proximity to the opponent’s Chinese Character mark (which transliterates to ‘Ben Fu” and is the Chinese phonetic approximation of ‘Penfolds’). This evidence also showed the applicant had adopted a trade dress notably similar to that of the opponent’s ‘Penfolds’ brand.

The delegate was satisfied the evidence established a pattern of behaviour in which the applicant has attempted to pass off its ‘Barry Ford’ wine as being, or being associated with, the ‘Penfolds’ brand. This behaviour is consistent with the applicant’s desire to exploit the opponent’s trade marks and reputation for its own commercial advantage. This exploitative conduct amounts to bad faith as it falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the wine industry.

Although the evidence did not show that the applicant has used ‘Ben Ford’, the pattern of the applicant’s behaviour is such that it is more probable than not that at the time of filing that trade mark application the applicant intended to use ‘Ben Ford’ in an exploitative manner designed to acquire a springboard or advantage by suggesting a connection with ‘Penfolds’ or some endorsed relationship with the opponent.

 

Boss Fire and Safety PL v Fire Containment PL [2019] ATMO 43 (29 March 2019)

Unsuccessful opposition by Boss Fire and Safety to trade mark registration of FIREBOX filed on 24 November 2015 for fire prevention related goods in classes 6, 17 and 19.

The opponent primarily relied on grounds of opposition under ss 58. 62A and s42(b), but also pressed ss 41, 59, 60 and 62, but failed to satisfy the delegate on any ground.

Under the s50 ownership ground, the opponent asserted prior use of FIREBOX and/or FYREBOX for the same kind of goods, but the documents relied upon did not support that assertion.

Under the s60 reputation ground, the opponent asserted Australian reputation derived from use of FIREBOX since 2013 but, again, this was not supported by objective evidence and the delegate was not satisfied that the requisite reputation existed as at the 24 November 2015 filing date.

The opponent also relied on its reputation in the FIREFOX 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.

Under the s62A bad faith ground, the opponent relied on a former employee taking up employment with the applicant and that employee having access to knowledge about the opponent’s FIREBOX and FYREBOX brands. However, there was no persuasive evidence that the relevant employee mis-used confidential information.

Under the s59 ground, the opponent asserted the applicant did not have an intention to use the applied for mark, but rather filed the application for tactical reasons to prevent other traders using it. However, there was no evidence which indicated that the applicant’s intention was an uncertain or indeterminate possibility, or that there was any fraudulent purpose.

Under the s41 ground, the opponent relied on dictionary definitions of “fire” and “box” and claimed, based on these definitions, that the applied for mark has an ordinary meaning of “a box-shaped product for use in relation to fires, such as to resist fire or prevent the spread of fire” and other traders has a legitimate need to use this term. However, the delegate noted the opponent provided no evidence demonstrating that “firebox” bears any ordinary signification in the relevant industry.

Finally, under the s62 ground, the opponent claimed that the Registrar had accepted the application for registration on the basis of representations that were false in material particulars. These particulars were contended to be the applicant’s representation that it was the owner of the applied for mark and that it intended to use it. Given the delegate’s previous findings on these issues, this ground could not be sustained.

 

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