L & T Trading Pty Ltd v Cong Ty Co Phan Ky Nghe Thuc Pham Vietnam (Vietnam Food Industries Joint Stock Company)  ATMO 33 (3 March 2020)
Partly successful opposition by L&T Trading to an application for removal of its trademark registrations for VIFON (word and logo) alleging non-use during the 3 years period ending on 14 April 2018.
The VIFON word mark registrations dated from 6 September 1994 and covered various goods in classes 29 and 30. The VIFON Logo registration dated from 11 June 2009 and covered various goods in class 30.
The opponent markets its food products to the Asian community in Australia.
The removal applicant contended that the products sold in Australia by the opponent were offered in its capacity as agent and hence all use of the relevant trade marks should be attributable to the removal applicant. There was an Agency Contract dated 10 March 2006.
The delegate found no use of the VIFON word mark for any class 29 goods. There was use of this mark for “preparations made from cereals and sauces (condiments) in class 30 as well as use of the Logo mark for all the registered class 30 goods.
The primary issue in contention was whether this use was by the opponent or the removal applicant. The delegate found the opponent engaged the removal applicant to manufacture the relevant goods and all use of the trade marks, at least prior to 2006, was by the opponent. The issue was then whether the 2006 Agency Contract changed this relationship and the delegate answered this in the negative. The removal applicant was merely a contract manufacturer which produced the relevant foodstuffs on the opponent’s instruction. Hence all use of the trade marks was by the opponent.
The delegate was not prepared to exercise discretion to leave the VIFON word mark on the Register for goods other than those for which use had been proven. Hence the delegate directed the class 29 word mark registration be removed in its entirety and the class 30 word mark registration to be restricted to “preparations made from cereals and sauces (condiments)”.
Flujo Sanguineo Holdings Pty Ltd v Universal Food Products Pty Ltd  ATMO 34 (5 March 2020)
Unsuccessful opposition by Flujo to trademark registration of NUVIA filed on 8 August 2016 for a range of goods in class 30.
The opponent relied on grounds of opposition under ss 42(b), 44, 58, 60 and 62A, but failed to establish any ground.
There is also an ongoing Federal Court action in which the opponent is seeking cancellation of the applicant’s earlier Nuvia trademark registration covering natural sweeteners.
The dispute in the current opposition matter centred on the applicant’s claims to sugar substitutes, particularly natural sweeteners.
Under s44, the opponent relied on its prior trademark registration for NATVIA and NUTTVIA, but the delegate was not satisfied that the applied for NUVIA mark was substantially identical with or deceptively similar to either of these registered marks.
Given the finding on substantial identity, the s58 ownership ground based on the opponent’s NATVIA and NUTTVIA marks also failed.
Under s60, the opponent relied on the Australian reputation of its NATVIA mark used for sweeteners and its NUTTVIA mark used for hazelnut spreads (which also contained its NATVIA sweetener). However, the delegate was not satisfied the evidence established the requisite reputation.
The opponent also relied on its reputation under s42(b) to allege that use of the applied for NUVIA 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.
Under s62A, the opponent asserted bad faith based on a director of the applicant having previously worked with the opponent from 2009 to 2014 before establishing a directly competitive business in 2015. However, the delegate concluded that the applicant may have “set it sails very finely” when it coined the NUVIA mark, but it has nevertheless “navigated past the danger of s 62A”. While there was competitive commercial behaviour, the delegate found that behaviour would be of a “standard acceptable to reasonable and experienced persons”.
Nelson Conglomerate Pty Ltd v Cairns and Hinterland Hospital and Health Service  ATMO 35 (6 March 2020)
Unsuccessful opposition by Nelson to an application for removal of its trademark registration for RIVER INTELLIGENCE Logo alleging non-use during the 3 years period ending on 13 June 2018.
The trademark registration dated from 30 June 2008 and covered various entertainment related goods in class 9.
The opponent was self-represented and the evidence relied upon contained bald assertions of use without corroborating proof. The evidence fell well short of demonstrating good faith commercial use of the registered mark.
The delegate was not prepared to exercise discretion and directed the trademark registration be removed in its entirety.
Victoria Beckham v VB Skinlab Pty Ltd  ATMO 36 (9 March 2020)
Unsuccessful opposition by Victoria Beckham to trademark registration of VB SALON Logo and VB SKINLAB Logo shown below filed on 23 and 26 March 2018. The VB SALON mark covered various beauty services in class 44 and the VB SKINLAB mark covered various cosmetic products in class 3
The applicant was self-represented and did not file any evidence or written submissions.
The opponent relied on grounds of opposition under ss 42(b), 58, 60 and 62A, but failed to establish any ground.
Essentially, the opponent relied on reputation derived from use of her VB mark for fashion apparel, accessories and cosmetics. Her fashion business commenced in the UK in 2008 with an e-commerce site in 2013 and a flagship fashion apparel retail store in London which opened in 2014. Australian use of this mark for cosmetics commenced in September 2016. Given her celebrity status, there was considerable marketing and promotional activity.
Under the s58 ownership ground, the opponent relied on her prior use of the VB mark for cosmetics, but the delegate considered the applied for VB SKINLABS marks was not substantially identical with VB. The delegate noted that while the term ‘skinlab’ has some use in the cosmetics industry, it is not descriptive of the applicant’s goods and cannot be ignored for the purposes of comparison.
Under s60, the opponent relied on the Australian reputation in her VB mark. The delegate observed the evidence showed a somewhat limited reputation in Australia and the VB mark was used in close association with VICTORIA BECKHAM and ESTEE LAUDER. Consequently, the delegate was not satisfied that any confusion would arise due to the reputation of the VB mark.
The opponent also relied on her reputation under s42(b) to allege that use of the applied for marks would be misleading or deceptive and contrary to the Australian Consumer Law or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.
Under s62A, the opponent sought to draw an adverse inference that the application must reasonably have known about her VB mark and filed the trademark applications in bad faith. However, the delegate was not satisfied the evidence supported this serious allegation. The delegate viewed the applicant’s website and found nothing to indicate an intention to take advantage of the reputation of the opponent’s VB mark.
3Floorsup Pty Ltd v Fiix Inc  ATMO 37 (12 March 2020)
This concerned an opposition to trademark registration of Fiix (stylised) and a request by the opponent to add a ground of opposition based on s58A.
The delegate refused to allow this amendment.
The s58A ground of opposition is only relevant where an application is accepted under the s44(4) prior continuous provision. The opponent was seeking to add this ground in the event a position arises in the course of the opposition where the delegate determines the trademark application should be accepted under s44(4).
Under reg 5.12(3) the Registrar has discretion to grant a request to add a new ground of opposition if satisfied that the addition relates to information of which the opponent could not reasonably have been aware at the time of filing its statement of grounds and particulars.
The delegate was prepared to acknowledge that the filing of the applicant’s evidence in answer was the objective trigger for alerting the opponent to the relevance of s44(4) and the need to rely on s58A. However, the opponent delayed filing the amendment request for some 2 months after this trigger and did not satisfactorily explain this delay. Further, the amendment request was made at a late stage in the proceedings potentially causing prejudice to the applicant and there is a public interest in ensuring that proceedings before the Registrar are run as quickly and cost effectively as possible.
Global Creatrix Pty Ltd  ATMO 38 (13 March 2020)
Successful objection by the applicant to revocation of acceptance of its application for trademark registration of INSTITUTE OF WOMEN filed on 14 August 2017 for various services in classes 41 and 44.
The examiner initially raised objections based on distinctiveness under s41 and prior similar marks under s44. The applicant filed evidence resulting in withdrawal of these objections and the trademark application proceeded to acceptance with a s44(4) endorsement indicating reliance on prior continuous use.
The attorney for the owner of the prior marks initially raised as objection under s44 subsequently wrote to the Registrar. This resulted in a review and an intention to revoke acceptance on the basis that the evidence relied upon did not show use of the applied for mark, rather it showed various stylised forms and use of additional matter.
The delegate agreed with the applicant that this was a mere difference of opinion which was insufficient to reasonably revoke acceptance. The owner of the prior marks had already filed an opposition and that was the more appropriate forum to determine registrability of the applied for mark.
Unilever PLC v Damien Amos  ATMO 39 (13 March 2020)
Successful opposition by Unilever to trademark registration of LOVE TEA filed on 14 March 2017 for various tea based beverages in class 30.
The opponent prevailed under the s58 ownership ground. It relied on earlier use of LOVE TEA by other parties and also argued the applicant could not assert sole ownership because of publicly available documents showing his partner, Emma Watson was also involved.
The delegate was not satisfied the applicant had shown that he was the owner of the LOVE TEA mark, given the involvement of Emma Watson and the absence of any document corroborating his partner had transferred her rights.
The delegate also accepted Wayback Machine documents as being reliable evidence as to earlier trade mark use of LOVE TEA by other parties, particularly use in 2006 shown on the Herbal Emporium website extract. This use pre-dated the applicant’s assertion ( which was not accepted) that he had been used the LOVE TEA trade mark as early as 2009.
Volkswagen AG v Tungpei Industrial Co Ltd.  ATMO 40 (19 March 2020)
Unsuccessful opposition by Volkswagen to trademark registration of TPI filed on 3 April 2017 for various bearings in classes 7 and 12.
The opponent relied on grounds of opposition under ss 42(b), 44 and 60, but failed to establish any ground.
The opposition was primarily based on the opponent’s prior registration for TSI and TDI as well as reputation derived from its use of these marks.
The TDI mark was first used by the opponent in Germany in 1989 and in Australia since 2005 in connection with vehicles with a turbocharged direct engine. The TSI mark was first used by the opponent in Germany in 2005 and in Australia since 2009 in connection with vehicles with a twin charger engine.
The applicant was founded in Taiwan in 1966 and is a manufacturer of ball bearings which it supplies to major manufacturers including automobile, bike, machine tools, electric motor and IT manufacturers.
Under the s44 ground, the delegate considered the applicant’s goods were similar to those covered by the opponent’s TSI and TDI registrations, but found that TPI was not substantially identical with or deceptively similar to TSI or TDI.
Under s60, the delegate was satisfied the opponent’s TSI and TDI marks had acquired an Australian reputation in respect of vehicle engines but, notwithstanding this reputation, it is highly unlikely that any confusion will arise.
The opponent also relied on the reputation in its TSI and TDI marks under s42(b) to allege that use of the applied for TPI mark would be misleading or deceptive and contrary to the Australian Consumer Law or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.
National Australia Bank Limited  ATMO 41 (19 March 2020)
NAB was able to overcome the objections to trademark registration of the composite mark shown below filed on 5 March 2018 for various goods and services in classes 9, 35, 36, 41, 42, 44 and 45.
The Examiner raised objections under s44 based on prior trade mark registrations for THE BRIDGE covering relevant goods/services.
NAB relied on the Woolworths Metro case and argued that, like Woolworths, the nab logo element has a degree of notoriety or familiarity of which judicial notice can be taken. The delegate agreed and considered this application was on all fours with the Woolworths Metro case. Even if there was a modicum of doubt, then the presumption of registrability was applicable.
Horizons (Asia) Pty Ltd v Enagic Co Ltd  ATMO 42 (20 March 2020)
Unsuccessful opposition by Horizons to trademark registration of KANGEN WATER filed on 11 February 2016 for electrolytic water generators in class 11.
The opponent relied on grounds of opposition under ss 42(b),43, 44, 58, 58A, 60 and 62A, but failed to establish any ground.
Under s44, the opponent relied on its prior registration for KANGEN which covered various goods in class 11, but expressly excluded apparatus for water filtration. That registration is being challenged by the applicant on the ground of non-use. In any event, the delegate considered the applicant’s goods were not similar to any goods covered by the opponent’s registration.
The s58 ownership ground failed because the opponent was relying on use for bottled water which is not the same kind of thing as the applicant’s goods.
The s58A ground was inapplicable because the applied for mark was not accepted under s44(4).
The s43 ground failed because the opponent misunderstood its application and there was no evidence of any connotation in the applied for mark likely to give rise to deception or confusion.
The s60 ground failed because the delegate was not satisfied the opponent’s evidence established a sufficient Australian reputation in its KANGEN mark.
The opponent also relied on the reputation in its KANGEN mark under s42(b) to allege that use of the applied for KANGEN WATER 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 s62A bad faith ground also failed for lack of evidence.
Teton Gravity Research LLC v Tiger Woods Enterprises SA  ATMO 43 (23 March 2020)
Unsuccessful opposition by Teton to trademark registration of TGR DESIGN filed on 20 March 2017 (with a priority date of 27 September 2016) for a broad range of services in classes 37, 41, 42 and 44.
The opponent relied on grounds of opposition under ss 42(b), 58, 60 and 62A, but failed to establish any ground.
The opponent essentially relied on use and reputation of its TGR and TETON GRAVITY RESEARCH marks.
The applicant is, of course, affiliated with the well known professional golfer, Tiger Woods who, in 2006, formed a golf course design and construction business called Tiger Woods Design. In October 2016, that and other businesses in the Tiger Woods Group were rebranded under the trade mark TGR ( being an abbreviation of ‘Tiger’).
The s58 ownership ground failed because the delegate was not satisfied the evidence disclosed any earlier use of the opponent’s trade marks.
The s42(b) and s60 grounds failed because the delegate was not satisfied the evidence disclosed the requisite Australian reputation in the opponent’s marks.
The s62A bad faith ground also failed. The delegate noted the adoption of TGR as an abbreviation of Tiger seems to be entirely natural and there is nothing in the evidence to indicate that the adoption of TGR might be considered unscrupulous, underhand or unconscientious.
US Dairy Export Council v Consorzio Per La Tutela Del Formaggio Gorgonzola  ATMO 44 (24 March 2020)
Successful opposition by US Dairy to registration of GORGONZOLA as a certification trade mark filed on 7 July 2015 for cheese and cheese products in class 29.
The opponent prevailed under s177.
After evidence was completed and a week before the hearing, the applicant attempted to introduce additional documents as to the history of protection of the GORGONZOLA mark in Europe, but the delegate was not prepared to exercise discretion and allow it. In any event, it was primarily directed to the s59 ground of opposition which did not need to be considered by the delegate in light of the finding under s177.
Under s177, a certification trade mark application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified. Also, in deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account (a) the extent to which the certification trade mark is inherently adapted to distinguish those goods and services; or (b) the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods and services.
The applicant relied on GORGONZOLA being a Protected Designation of Origin (PDO) in the EU.
The opponent’s position was that the ordinary signification of “gorgonzola” is the name of a particular style of blue vein cheese and it does not signify cheese produced in a particular geographical area or regional variation. As such, it does not distinguish cheese goods certified by the applicant from those of other traders.
After considering the evidence, the delegate concluded that the term ‘Gorgonzola’ has been used in Australia since at least 1882 to describe a type of blue vein cheese available in Australia often (but not necessarily) produced in the Lombardy region of Italy. Further, no cheese certified by the applicant was imported into Australia before 1999. As such, at the relevant filing date, the applied for mark was not inherently adapted to distinguish goods certified by the Applicant from goods not so certified. The ordinary signification of ‘Gorgonzola’ is a descriptive term for a type of blue vein cheese (and a geographical reference to a town in Italy) historically originating in a particular geographical region of Italy. There is clear evidence (based on existing use of ‘Gorgonzola’ for its descriptive purposes) of the desire of other traders to use it for its descriptive properties.
The Applicant did not file any direct evidence, such as surveys or the like, that cheese consumers in Australia have been educated to view ‘Gorgonzola’ as an indicator that the cheese bearing this term has been certified by the applicant. It merely relied on evidence of marketing and use which the delegate considered as being minimal (especially in comparison to the size of the market for cheese in Australia).
US Dairy Export council v Consorzio Per La Tutela Del Formaggio Asiago  ATMO 45 (25 March 2020)
Successful opposition by US Dairy to registration of ASIAGO as a certification trade mark filed on 8 November 2016 for cheese in class 29.
The opponent prevailed under s177. This involved similar issues to the Gorgonzola case, but was decided by a different delegate. Like GORGONZOLA, ASIAGO was a Protected Designation of Origin (PDO) in the EU.
There was evidence that at least the Sartori Company has been using ‘asiago’ as a descriptor for cheese in the US since 1950.
After reviewing the evidence, the delegate considered that the ordinary signification of the term ‘Asiago’ is the name of a cheese which originated in or around the Italian town of Asiago. It is descriptive of cheese and says nothing about whether the cheese sold under it has been certified in accordance with a particular regime in relation to the quality or characteristics of such cheese originating from this area.
The delegate concluded that ASIAGO is not inherently adapted to distinguish cheese certified by the applicant or an approved certifier from goods not so certified and there was insufficient evidence of use or any other circumstances to indicate the ASIAGO certification trade mark has become adapted to distinguish such cheese.
Also see Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company  ATMO 64 (4 May 2018) reported here
Half Price Blinds Pty Ltd  ATMO 46 (26 March 2020)
Applications for trademark registration of HALF PRICE BLINDS for various goods and services in classes 6, 19, 20, 22, 24 and 35 were refused. They were divisional applications with priority dates of 28 September 2010 and 12 October 2017.
During examination the applications encountered objections that the applied for mark lacked any inherent adaptation to distinguish, being descriptive of blinds sold at half the normal price and retail services relating to such goods.
The applicant conducted an online business and filed evidence as to use of the applied for mark from November 1999. However this evidence was insufficient to persuade the examiner that HALF PRICE BLINDS has acquired a secondary meaning and become distinctive in fact, particularly as it was necessary to assess use before the respective priority dates and much of the evidence disclosed use of a logo variant shown below, rather than the plain words.
This logo version was already registered as a trade mark.
Square Inc v J Plus S Pty Ltd  ATMO 47 (26 March 2020)
Successful opposition by Square, Inc to trademark registration of Tax Square filed on 11 July 2017 for various tax related services in class 35.
The opponent prevailed under the s44 ground by relying on its prior registrations for SQUARE for various goods and services in classes 9, 35, 36 and 38.
The delegate considered the applicant’s “tax assessment (accounts) preparation, tax preparation and tax return preparation” services were similar to “services for reconciling, namely processing payment transactions based on credit cards, debit cards, gift cards, and other forms of payment” covered by the opponent’s SQUARE registered mark. It appears the delegate reached this view based on construing the ordinary language of the respective specifications, but it is unclear whether any evidence was filed which was specifically directed to this issue.
The delegate also considered the applied for Tax Square mark to be deceptively similar to the opponent’s registered SQUARE mark.
Bayer Intellectual Property GmbH v Conquest Crop Protection Pty Ltd  ATMO 48 (31 March 2020)
Unsuccessful opposition by Bayer to trademark registration of PRECEED filed on 11 January 2017 for various herbicides in class 5.
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 its prior trademark registration for PRECEPT and Australian use of that mark since 2008 in relation to herbicides.
The s44 ground failed because the delegate did not consider the applied for PRECEED mark to be deceptively similar to PRECEPT.
Under s60, the delegate found the opponent’s PRECEPT mark had acquired a reputation for herbicides but, given the difference in the respective marks, there would not be a likelihood of deception or confusion.
The opponent also relied on the reputation in its PRECEPT mark under s42(b) to allege that use of the applied for PRECEED mark would be misleading or deceptive and contrary to the Australian Consumer Law or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.
DXC Technology Australia Pty Limited and Ent Services Australia Pty Ltd v Specialisterne Centre Australia Limited  ATMO 49 (31 March 2020)
Unsuccessful opposition by DXC and Ent Services to trademark registration of DANDELION filed on 6 October 2017 for various goods and services in classes 16, 35, 41 and 42.
The opponents relied on grounds of opposition under ss 42(b), 58, 60 and 62A, but failed to establish any ground.
The opponents were involved in the development of an Australian pilot program to build information technology skills and careers for individuals on the autism spectrum called the Dandelion Program from about January 2015. This program was developed in collaboration with the Applicant’s Danish parent company. There were agreements in place between the opponents and the applicant.
The applicant argued it’s Danish parent company independently conceived ‘dandelion’ as a metaphor for their services. Dandelion is a weed which, while unwanted, can be cultivated for positive use and persons with Autism Spectrum Disorder (ASD) have certain characteristics and skill sets which may be gainfully utilised in software testing. A logo was developed which included a dandelion seed graphic element.
Under s60, the delegate had reservations whether Dandelion Program has actually been used as a trade mark. Further, a significant part of the marketing highlighted the applicant’s parent company’s methodology. The delegate was not convinced that, even if the Dandelion Program is a trade mark, any reputation it has derived excluded the reputation of the applicant. Consequently, any consumers considering a link between the applied for mark and the Dandelion Program would not actually be deceived or misled, because there was in fact such a link. Hence, the delegate was not satisfied that use of the applied for mark by the applicant would be likely to deceive or cause confusion.
The opponents also relied on their reputation in the Dandelion Program under s42(b) to allege that use of the applied for DANDELION mark would be misleading or deceptive and contrary to the Australian Consumer Law or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.
Under the s58 ownership ground, the delegate was satisfied that the applicant’s parent company and the applicant have used DANDELION in connection with a methodology for the identification and recruitment of people with ASD in Australia in 2009 and prior to and during negotiations with the opponents prior to their adoption of the Dandelion Program. Hence, the applicant’s claim to ownership could not be disrupted.
The s62A bad faith ground also failed. The delegate found the applicant’s parent company had been using DANDELION internationally since 2003 and in Australia since 2009. This activity pre-dated the opponent’s use of the Dandelion Program in 2014. Hence, the trade mark application was filed in good faith.