Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – March 2021

REA Group Ltd v Real estate Store Pty Ltd [2021] ATMO 18 (4 March 2021)

Successful opposition by REA Group to trademark registration of the composite mark shown below filed on 30 November 2017 for various goods and services in classes 9, 35, 36, 37, 38, 41 and 42.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its realestate.com.au marks used since 1998 for its property listings website, particularly the version shown below:

Given the extent of this reputation the delegate was satisfied that there is a real and tangible danger that consumers would, at the very least, be caused to wonder as to the existence of some sort of connection between the goods and services bearing the opponent’s mark and those bearing the applied for mark.

 

Maya Abhaya v Elenco Electronics Pty Ltd [2021] ATMO 19 (11 March 2021)

Unsuccessful opposition by Abhaya to trademark registration of SNAP CIRCUITS filed on 14 March 2018 for electronic toy building kits in class 28.

The opponent relied on the s41 distinctiveness ground.

The delegate noted a consumer is likely to read SNAP CIRCUITS as describing a characteristic of the applicant’s goods, being the assembly method used to attach the parts to build a working circuit, but considered this mark had some degree of inherent distinctiveness and came within s41(4).

The applicant relied on evidence of use in Australia of the applied for mark since 2006 and the delegate was satisfied this mark had acquired distinctiveness sufficient to qualify for registration.

Monster Energy Company v Home Focus Development Limited [2021] ATMO 20 (12 March 2021)

Successful oppositions by Monster Energy to trademark registration of MONSTER MAN and MONSTER FRIENDZ filed on 26 November 2012 for various goods and services in classes 9, 16, 25, 28, 30 and 41.

The opponent prevailed under the s44 ground by relying on its prior registrations for MONSTER covering similar goods in classes 16 and 25. The delegate considered the applied for marks were deceptively similar to MONSTER. Hence the opponent prevailed to some extent under this ground and the delegate was not prepared to allow the applicant to amend its specification, so the trade mark applications failed in their entirety.

Acorn Capital Ltd v Acorns Grow Inc [2021] ATMO 21 (18 March 2021)

Successful opposition by Acorn Capital to trademark registration of ACORNS filed on 9 February 2015 for software for tracking financial portfolios and investments in class 9.

The opponent prevailed under the s44 ground relying on its prior registration for ACORN CAPITAL covering financial services in class 36.

The delegate considered the applied for ACORNS mark was substantially identical with the opponent’s registered ACORN CAPITAL mark and its software was closely related to the opponent’s registered services.

Law Partners Compensation Lawyers Pty Ltd as trustee for the Law Partners Unit Trust [2021] ATMO 22 (19 March 2021)

The applicant was able to overcome distinctiveness objections raised against its applications for trademark registration of LAW PARTNERS in plain word and stylised form (shown below) filed on 6 June 2017 for various legal services in class 45.

The delegate considered the applied for marks were not to any extent inherently adapted to distinguish the designated services and came within s41(3).

However, the applicant relied on evidence of use of the word mark since 2004 and the stylised mark since 2011. The delegate was satisfied this evidence was sufficient to show the applied for marks did in fact distinguish the applicant’s services as at the filing date.

Australian Institute of Management v The Australian Institute of Music Limited [2021] ATMO 23 (22 March 2021)

Unsuccessful opposition by Australian Institute of Management to trademark registration of AIM filed on 10 April 2015 for various goods and services in classes 16 and 41 relating to music, art and humanities.

The opponent relied on grounds of opposition under ss 42(b), 43, 44, 58, 58A, 59, 60 and 62A but failed to establish any ground.

Under s44, the opponent relied on its prior registrations for word and logo versions of its AIM trade mark which covered similar goods and services, however the delegate considered the applicant’s evidence of use of the applied for mark since 1991 was sufficient to support registration under the s44(3)(a) honest concurrent use provision.

Under s60 (which is independent of s44(3)), the opponent relied on its use of the AIM mark since 1961 and use of this mark by its predecessor in business since 1941. The delegate was satisfied the AIM mark had acquired a relevant Australian reputation, but this reputation was limited to education and training services in the field of management. Given that the applicant’s services were directed to the field of music, the delegate was not satisfied as to the likelihood of deception or confusion. Indeed, there was no evidence of any actual confusion despite concurrent use of the respective marks for almost 30 years.

The s43 ground failed because the opponent was relying on likelihood of confusion arising from its reputation rather than such confusion arising from a connotation in the applied mark AIM mark.

Under the s58 ownership ground, there was no evidence to corroborate use by the Opponent of its AIM mark prior to the applicant’s first use of the applied for mark in 1991. However, the opponent did own a registration for the AIM word mark in class 16 which dated from 1969 and could be relied upon for asserting ownership for such goods. The opponent’s class 41 registration for its AIM logo mark was not substantially identical with the word mark AIM and so could not be relied upon to establish ownership for class 41 services.

S44(3)(a) is only applicable to s44 and not to s58. However, the delegate referred to an article by Burrell & Handler which discussed the possibility of honest concurrent use giving rise to co-ownership and concluded, at paragraph 50:

“… in circumstances where the Applicant had used the Trade Mark in an honest, concurrent manner for almost 25 years at the relevant date, in a manner that would ordinarily establish common-law ownership of the Trade Mark, it would be a seemingly inequitable outcome to find that the Applicant entirely lacked ownership rights in the Trade Mark, notwithstanding the Opponent’s prior registration of the Word Mark for the Class 16 goods. By reason of the extensive evidence of the honest concurrent use of the Trade Mark I find that both the Opponent (by reason of its registration of the Word Mark) and the Applicant (by reason of its 25 years of use of the Trade Mark) are co-owners of the Trade Mark, under common law, for the Class 16 goods. As such I cannot be satisfied that the Applicant is not the owner of the Trade Mark for the Class 16 goods, the test under s58.”

The other grounds of oppositions were not supported by evidence and hence also failed.

Jaimex Nominees Pty Ltd v Bamboo Babe Pty Ltd [2021] ATMO 24 (22 March 2021)

Unsuccessful opposition by Jaimex Nominees to trade mark registration of ‘earthify’ filed on 20 February 2019 for various sanitary and hygiene goods in class 5.

The opponent relied on the s41 ground but failed to satisfy the delegate that the applied for mark lacked sufficient distinctiveness to qualify for registration.

The opponent argued that “earthify” refers to a character of the relevant goods, namely biodegradability. However, the delegate noted there were various other words available to other traders such as ‘natural and organic’, ‘eco-friendly’, ‘environmentally friendly’, and ‘biodegradable’. There was no evidence that ‘earthify’ is a term that other traders might legitimately need to use in respect of their similar goods.

Musidor B.V. v We the Wild Ones Pty Ltd [2021] ATMO 25 (24 March 2021)

Successful opposition by Musidor to trademark registration of JAGGER & STONE filed on 19 March 2018 for various APPAREL IN CLASS 25.

The opponent prevailed under the s62A bad faith ground.

The Opponent is the exclusive owner of trade mark, copyright, licensing and performing rights for the Rolling Stones band and its members, including Mick Jagger.

The evidence disclosed that, after the filing date, the applicant’s Jagger & Stone Instagram account featured the applied for mark with images of models posing in front of electric guitars and on top of amplifiers, and signs proclaiming, ‘If the music is too loud you are too old’, as well as use in combination with the words, ‘I’m with the band’ and with models posing with electric guitars and amplifiers. There was no obvious reason why the applicant would need to associate its clothing with being in a band, loud music, or electric guitars and amplifiers.

The delegate concluded, at paragraph 30:

Whilst bad faith must exist at the time of filing the trade mark application, events occurring after that date may be relevant in drawing an inference as to the Applicant’s knowledge and intention at the filing date. In my view, this post-filing date use of the Trade Mark makes the inference clear, that in filing the trade mark application, the Applicant intended to use the Trade Mark with other iconography to strengthen the allusion to Mick Jagger and the Rolling Stones. The inference can also be drawn that this use was designed to further the association between the Trade Mark and the reputation of Mick Jagger and the Rolling Stones giving rise to an intangible advantage gained from public celebrity, widespread fame and interest.

These actions cast significant doubt on the bona fides of the applicant’s intentions in filing the trade mark application and the delegate was satisfied that the applicant’s conduct in filing the trade mark application was designed to acquire a springboard or advantage and would be regarded as in bad faith by persons adopting proper standards.

Richard Jean Yared [2021] ATMO 26 (24 March 2021)

The applicant was unable to overcome an examination objection to trademark registration of the Illustrations Logo mark shown below filed on 7 December 2017 for various intellectual property related services in class 45.

The delegate agreed with the examiner that a distinctiveness objection was appropriate as the word “illustrations” is descriptive and indicates that the services offered by the applicant are regarding illustrations. The applied for mark had some degree of inherent adaption to distinguish and so s41(4) was appropriate. However, the applicant’s evidence was insufficient to satisfy the delegate that this mark had the capacity to distinguish the designated services. The applicant had not commenced commercial use of the mark and had merely been developing and researching his business plan.

 Pearce IP Pty Ltd v Black Bear Asset Management Pty Ltd [2021] ATMO 27 (24 March 2021)

Unsuccessful opposition by Pearce IP to trademark registration of SCENT SCENE filed on 28 January 2019 for various fragrance, perfumery, skincare, cosmetics and make-up products in class 3.

The opponent relied on grounds of opposition under ss 41, 44 and 59 but failed to establish any ground.

The opponent was self-represented and did not file any evidence or submissions; so the opposition could only proceed based on the contents of the Statement of Grounds and Particulars and bearing in mind the opponent carries the onus of proof.

Under the s41 ground, the delegate considered that, in the absence of any evidence to the contrary, a consumer is likely to read SCENT SCENE according to its ordinary meaning, to refer to or as evocative of a distinctive smell found in a place of activity and at best an allusive reference to the applicant’s goods.

Under s44, the opponent relied on prior trademark registrations owned by other parties for SCENT SURROUND, SCENT AN EVENT, CALVIN KLEIN SCENT STUDIO and SCENTARAMA. However, the delegate did not consider the applied for SCENT SCENE mark to be deceptively similar to any of them.

The s59 intention to use ground was not supported by any evidence to shift the onus onto the applicant and necessarily failed.

Australian Chiropractors Association Limited v Chiro Care Mattresses Pty Ltd [2021] ATMO 28 (26 March 2021)

Partly successful opposition by Australian Chiropractors Association to an application for removal of its CHIRO trademark registration alleging no good faith use in the 3 years period ending on 17 June 2019.

The registration dated from 30 May 1985 and covered beds, chairs and all other goods in class 20.

The opponent relied on its ACA Endorsed Product program and its licensed endorsement of bedding products as well as use of the chiro.org.au domain name which links to the opponent’s website and that website lists endorsed products.

Part of the removal applicant’s evidence was directed to distinctiveness of CHIRO as a trade mark, but was irrelevant to the non-use issue. Of course, whether CHIRO was being used in a trade mark sense during the relevant period was essential to the opponent’s defence of its registration.

The delegate considered the opponent’s evidence lacked sufficient detail to demonstrate authorised use of the CHIRO mark through the endorsement program. While the delegate was critical of some aspects of the evidence purporting to show use of this mark by bedding retailers, there were some instances showing use of CHIRO in a trade mark sense in relation to mattresses. However, the opponent’s evidence did not include specific details of the licensing arrangements relied upon and so the delegate could not be satisfied that use of CHIRO by the relevant retailers was authorised by and under the control of the opponent.

Rather curiously, the decision did not contain any discussion as to whether there was a trade mark use of CHIRO in the opponent’s domain name.

NOnetheless, the delegate was prepared to exercise discretion in favour of the opponent and directed the CHIRO mark remain on the Register but with a limitation to mattresses.

Millie & More Pty Ltd v WOW Tech Canada Ltd [2021] ATMO 29 (29 March 2021)

Successful opposition by Millie & More to trademark registration of MOXIE BY WE-VIBE filed on 22 January 2019 for various adult sex aid products in class 10.

The opponent prevailed under the s60 reputation ground.

The opponent used its MOXIE trade mark since February 2006 in relation to tampons and other feminine hygiene products.

The applicant argued that “moxie” is defined in the Macquarie Dictionary as a noun meaning courage, audacity, liveliness. However, the delegate did not consider this meaning impacted upon the inherent distinctiveness of MOXIE as a trade mark for the opponent’s goods.

Although the market for feminine hygiene products is very large, the opponent’s sales achieved a 6.1% market share in 2008 but decreased considerably since that peak. Nonetheless, the delegate was satisfied the opponent’s MOXIE mark had acquired a sufficient Australian reputation in relation to feminine hygiene products.

Despite the differences between the respective goods, the delegate was satisfied that, because of the reputation of the MOXIE mark, use of the applied for MOXIE BY WE-VIBE mark would be likely to deceive or cause confusion.