Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – May 2019

Opel Automobile GmbH v Wanli Tire Corporation Limited [2019] ATMO 66 (1 May 2019)

Unsuccessful opposition by Opel to trademark registration of ADAMAS Logo shown below filed on 3 June 2016 for various cars, wheels and tyres in class 12.

Trademark-Registration-Adamas-Logo

The applicant did not file any evidence or participate in the hearing.

Under s44, the opponent relied on its prior trademark registrations for ADAM and ADAM X for similar goods, but the delegate did not consider the applied for mark was deceptively similar to either of them.

Under s60, the opponent relied on use of various trade marks containing or consisting of the word ADAM, but the delegate was not satisfied that any of them had acquired a sufficient reputation in Australia.

The opponent also relied on the s62A bad faith ground, but there was no evidence to support this.

Curiously, this trademark application lapsed because the applicant failed to pay the registration fee.

 

Myspace LLC v Michelle McLean [2019] ATMO 67 (6 May 2019)

Partly successful opposition by Myspace to an application for removal of its trademark registration for ILIKE alleging non-use during the 3 years period ending on 1 March 2017.

The ILIKE registration covered a broad range of goods and services in classes 9, 15, 16, 25, 38, 40, 41, 42 and 45.

The opponent operates the MYSPACE social networking platform with the iLike mark having a dedicated music discovery function.

The delegate was satisfied the opponent had rebutted the allegation of non-use for these types of goods and services. The delegate was also prepared to exercise discretion in favour of the opponent with the end result being some restriction to the scope of the registration.

 

Glenn William Davies v Seed Terminator Holdings Pty Ltd [2019] ATMO 68 (7 May 2019)

Unsuccessful opposition by Davies to an application for removal of his trademark registration for TERMINATOR alleging non-use during the 3 years period ending on 20 September 2017.

The TERMINATOR registration covered an agricultural machine in class 7.

The opponent’s evidence disclosed relevant trade mark use of ‘Davies Weed Terminator’, but the delegate did not consider this to be use of the registered TERMINATOR mark The addition of DAVIES WEED substantially affected the identity of the registered mark and could not be relied upon to rebut the allegation of non-use. Further, the delegate was not prepared to exercise discretion in favour of the opponent.

 

Simon Burke v Factor Holdings Ltd [2019] ATMO 69 (9 May 2019)

Unsuccessful opposition by Burke to an application for removal of his trademark registration for FACTOR alleging non-use during the 3 years period ending on 21 March 2017.

The FACTOR registration covered bicycle lights in class 11 and mountain bikes in class 12.

The delegate was critical of the evidence being relied upon by the opponent. While there was some use of FACTOR for various bicycle components, there was no clear use during the relevant period in relation to the registered goods. Further, the use being relied upon was by Apollo Bicycle Co Pty Ltd and the evidence was insufficient to show this was authorised and under the control of Burke (who was the company’s Managing Director). The delegate was not prepared to exercise discretion in favour of the opponent.

 

Emoji Company GMBH v Inquisitive Learners Pty Ltd [2019] ATMO 70 (10 May 2019)

Successful opposition by Emoji to trademark registration of emeji (stylised) as shown below filed on 20 December 2016 for various software and electronic publications in class 9 as well as a broad range of services in classes 41, 42 and 45

Trademark-Registration-emeji

The opponent prevailed under the s44 ground with the delegate being satisfied the applied for emeji (stylised) mark was deceptively similar to the opponent’s earlier registrations for the trade mark emoji which covered similar goods and services.

 

Find Marketing Pty Ltd v Find Financial Planners Pty Ltd [2019] ATMO 71 (13 May 2019)

Successful opposition by Find Marketing to an application seeking removal of its trademark registration for a series of marks containing the word ‘Find’ alleging lack of intention to use as at the 13 May 2016 filing date and no use up until 23 April 2017 for any of the registered class 36 services.

 

Vita Zahnfabrik H Rauter GmbH & Co KG v Kogon.com Holdings Pty Ltd [2019] ATMO 72 (13 May 2019)

Partly successful opposition by Vita to trademark registration of BELLA VITA filed on 3 March 2017 for first aid boxes and kits in class 5 and various dental and medical equipment in class 10.

The opponent prevailed under the s44 ground based on its prior registrations for various trade marks containing VITA for dental products. The delegate treated these as a family of trade marks and there was a high likelihood of contextual confusion in the context of dental products.

The delegate gave the applicant the opportunity to amend its specification to delete the relevant dental products. The applicant did so and consequently the BELLA VITA mark has proceeded to registration for a restricted specification.

 

The HD Lee Company Inc v Wenxuan Li [2019] ATMO 73 (14 May 2019)

Successful opposition by HD Lee to trademark registration of LeeBss filed on 14 July 2017 for various eyewear in class 9.

The opponent prevailed under the s60 ground. The delegate was satisfied its LEE trade mark had acquired a considerable Australian reputation in relation to clothing and a less significant reputation in relation to fashion accessories. Further, the delegate considered it likely that consumers would focus on the Lee element in the applied for mark and there is a significant degree of similarity which, given the reputation of the LEE mark and the nexus of the respective goods, would lead to confusion. The opponent provided evidence which satisfied the delegate that it is common for suppliers of clothing and fashion accessories to extend their brand into eyewear.

 

The Sunraysia Natural Beverage Co Pty Ltd v Honest Tea Inc [2019] ATMO 74 (15 May 2019)

Unsuccessful opposition by Sunraysia to an application for removal of its trademark registration for HONEST KIDS alleging non-use during the 3 years period ending on 26 September 2017.

The HONEST KIDS registration covered various non-alcoholic beverages in class 32.

During the relevant period and up to 23 November 2017, Benver International Pty Ltd was the registered owner of the HONEST KIDS trade mark. The trademark registration was assigned to Sunraysia on 10 October 2017.

The opponent acknowledged there was no use by Benver, but contended there was use by the parent company, Sabrands during the relevant period and by the opponent immediately after that period. The three entities were said to be part of the Sabrands Group. However, the delegate was not satisfied as to whether there was any control over use of the HONEST KIDS trade mark as a matter of substance and hence could not be relied upon as authorised use. In any event, the delegate was critical of the evidence of alleged use being relied upon. Further, the delegate was not prepared to exercise discretion in favour of the opponent.

 

Hino Jidosha Kabushiki Kaisha v Tallevine Pty Ltd [2019] ATMO 75 (15 May 2019)

Successful opposition by Hino to an application to extend the time for acceptance.

The applicant’s RAPTOR 4×4 trade mark application had confronted an examination objection based on the opponent’s prior registration for RAPTOR. The applicant had filed a non-use removal application against the cited RAPTOR registration, but did not seek deferment and its RAPTOR 4×4 application was advertised as lapsed. About 10 months after lapsing, the applicant filed its first extension request which was not pursued. Some three months later, the applicant filed its second extension application for a 17 months extension under s224(2)(a), namely an error or omission by the person concerned or by his or her agent. At the same time, the applicant also applied for a 17 months extension to request deferment under the same ground. The relevant error or omission was the failure of the applicant’s solicitors to notify the applicant that an examination report had issued due to a change in staff. As the extensions were for more than 3 months, they had to be advertised.

The opponent timely filed an opposition and another party, namely Ford Motor Company was also potentially impacted by any revival of the RAPTOR 4×4 application. However, its opposition to the extensions was filed too late and no extension to oppose was available. Ford also notified the Registrar that it had obtained an injunction restraining the applicant from registering any RAPTOR trade mark.

The delegate was satisfied the applicant had identified a relevant error or omission on the part of its solicitors, but did not consider it appropriate to exercise discretion and allow the extension. Other parties were likely to suffer greater inconvenience from any revival of the RAPTOR 4×4 application than that likely to be suffered by the applicant in losing the priority date of its trade mark application.

 

Spa Tech International Pty Ltd v Decina Bathroomware Pty Ltd [2019] ATMO 76 (15 May 2019)

Unsuccessful opposition by Spa Tech to an application for removal of its Indulgence trademark registration alleging non-use during the 3 years period ending on 16 April 2017.

The registration covered spas and spa baths.

The evidence relied upon by the opponent was undated and sourced from a third party. There was no evidence as to whether that third party was an authorised user of the registered mark. Hence, this evidence was insufficient to rebut the allegation of non-use. The delegate was not prepared to exercise discretion in favour of the opponent.

 

Airtasker Pty Ltd v Freelancer Technology Pty Limited [2019] ATMO 77 (16 May 2019)

Successful opposition by Airtasker to trademark registration of LIKE A BOSS filed on 19 September 2016 for goods and services in classes 9, 35 and 41 relating to freelance work.

The opponent prevailed under the s62A bad faith ground. The parties were direct competitors. The trade mark application was filed a mere 4 days after the applicant launched its media campaign featuring the identical LIKE A BOSS trade mark. The applicant did not file any evidence to rebut the allegation of bad faith. The delegate considered filing of the trade mark application in these circumstances was conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

 

Dermavita Company (Limited Partnership) Parseghian & Partner v Allergan Holdings France SAS [2019] ATMO 78 (21 May 2019)

Unsuccessful oppositions by Dermavita to trademark registration of JUVEDERM (in stylised and logo forms) filed on 4 July 2016 for cosmetics in class 3. The logo version also covered pharmaceutical skincare products in class 5.

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

The opponent was relying on earlier use of the JUVEDERM mark, but there was no evidence of Australian use or awareness of this mark in Australia. It also had a pending trade mark application for this mark which claimed an earlier filing date based on a Norwegian application, but that priority claim was refused in an earlier decision.

 

Emma Kruger [2019] ATMO 79 (22 May 2019)

An application for trademark registration of a Raccoon Shape shown below filed on 27 September 2017 for toys in class 28 was refused for lack of distinctiveness.

Trademark-Registration-Raccoon-Shape

The delegate noted the examiner’s research establishes that it is commonplace for traders to make comforters with a plush toy attached. The presence or absence of other raccoon-shaped comforters on the market in Australia is not determinative; however, there is at least one other trader in Australia that makes raccoon-shaped comforters and the examiner’s research establishes that there are several others who do likewise elsewhere in the world. Hence, there is a likelihood that other legitimately motivated traders might in the ordinary course of their business wish to sell raccoon-shaped comforters and, in fact, do so.

 

Ambassador Apparel Group Pty Limited v Kartell SpA [2019] ATMO 80 (23 May 2019)

Successful opposition by Ambassador Apparel to an application for removal of its CARTEL trademark registration alleging non-use during the 3 years period ending on 28 September 2016.

The registration covered apparel and footwear in class 25.

The opponent’s makes a range of uniform under contract to Transport for New South Wales. There was evidence from a procurement officer from Transport for New South Wales as to the purchase of apparel bearing the Cartel mark from the Opponent since 2009.

While there was no evidence relating to sports shoes, the delegate exercised discretion in favour of the opponent to leave its trademark registration intact.

 

Lexvoco Pty Ltd v InCounsel Pty Ltd [2019] ATMO 83 (30 May 2019)

Unsuccessful opposition by Lexvoco to trademark registration of LEXOO filed on 28 October 2016 for legal related services in classes 36, 42 and 42

The opponent relied on grounds of opposition under ss 44, 58A and 43. S58A was not relevant as the LEXOO application was not accepted under s44(4) prior continuous use. The opponent failed to establish any of the other grounds.

Under s44, the opponent relied on its prior trademark registrations for LEXVOCO, but the delegate did not consider LEXOO to be deceptively similar to LEXVOCO, particularly in the context of the respective services and that the prefix “lex” is the Latin for “law” and the respective suffixes are quite different.

The s43 ground failed because the opponent was relying on a comparison of the respective marks, rather than any connotation inherent within the applied for LEXOO mark.

 

Campbell Soup Company [2019] ATMO 84 (31 May 2019)

Campbell Soup successfully overcame a distinctiveness objection initially raised against its application for trademark registration of UNCANNED for information on food and food production in class 43.

The examiner contended that ‘uncanned’ indicates information about food which is not canned and other traders have a legitimate desire to use this term.

The delegate took a different view and found UNCANNED to be inherently adapted to distinguish the applicant’s services.

The delegate considered that while ‘uncanned’ has a readily apparent meaning in connection with foodstuffs, it is also apparent that this is a rather unnatural term that is unlikely to be ordinarily used to describe foodstuffs which are not in cans. Further, it does not follow that a sign which has an apparent meaning also has an ordinary signification. The delegate was satisfied that ‘uncanned’ has no ordinary signification in connection with foodstuffs. Further, the delegate would have found that it is unlikely that this sign would be needed by other traders.

The delegate then went on to consider the meaning of ‘uncanned’ in respect of services and found it may indicate a service which is a standard service, rather than one which is based on the specific needs of a particular customer. However, the awkward nature of the term and the apparent absence of its use indicate strongly that ‘uncanned’ has no ordinary signification to persons who will purchase the applicant’s services. Further, it was unlikely that other traders would need to use ‘uncanned’ in connection with the applicant’s services.