Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – May 2020

Compagnie des Montres Longines S.A. v Point Tec Products Electronic GmbH [2020] ATMO 72 (5 May 2020)

Unsuccessful opposition by Longines to trademark registration of IRON ANNIE Logo shown below filed on 30 May 2017 for beauty care products, watches and apparel in classes 3, 14 and 25.

Trademark-Registration-Iron-Annie-Logo

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

The opponent primarily relied on use and registration of its ‘winged hourglass’ device mark shown below:

Trademark-Registration-Longines-Winged-Hourglass-Logo

The s44 ground failed because the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to the opponent’s registered mark. Rather curiously, the delegate referred to the relevant goods being luxury items with a high price point as a factor reducing the likelihood of confusion; although such considerations are not relevant to notional use required under s44.

Under s60, the delegate was satisfied the opponent’s winged hourglass device mark had acquired a strong Australian reputation, particularly for watches. However, given the differences in the respective marks, confusion was unlikely.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for mark would be misleading or deceptive and contrary to the Australian Consumer Law and constitute passing off under the common law. However, given the delegate’s finding under s60, the s42(b) ground also failed.

 

Somfy Activites SA v Changchun Chengji Technology CO LTD [2020] ATMO 73 (5 May 2020)

Successful opposition by Somfy to trademark registration of INTEY filed on 29 August 2017 for various goods in class 9.

The opponent prevailed under the s44 ground by relying on its prior registration for INTEO Logo shown below coverage a range of home automation products in class 9.

Trademark-Registration-Inteo-Logo

The delegate considered many of the applicant’s goods to be similar to those covered by the opponent’s registered mark and the applied for mark to be deceptively similar to the opponent’s mark. The delegate observed: “Visually and conceptually the Opponent’s Trade Mark is likely to be viewed as the coined word ‘inte’ with a house device containing the @ symbol. Given that the house device is likely to be somewhat discounted due to the nature of the goods offered under that mark, being goods relating to the home I find that customers will likely focus on the ‘INTE’ element of the Opponent’s Trade Mark.”

Although some of the applicant’s goods were not similar to those of the opponent, the delegate referred to Apple Inc v Registrar of Trade Marks (the APP STORE case) [2014] FCA 1304 and rejected the application in its entirety.

 

Mumusokr Co Ltd v Guangdong Saiman Investment Co Ltd [2020] ATMO 74 (5 May 2020)

Successful opposition by Mumusokr to trademark registration of MUMUSO filed on 27 May 2017 for a range of class 35 services.

The opponent was self-represented and prevailed under the s62A bad faith ground.

The delegate concluded: “The Opponent’s evidence satisfies me that before the Relevant Date it had an established business with a presence in a number of countries outside of Australia. It is apparent from the evidence of both parties that they are operating in a similar market and it is highly likely that the Applicant was aware of the Opponent’s business and its use of its trade mark. Further, it is my view that the application to register, in Australia, a trade mark which is almost identical to one which is in use by a competitor in a number of foreign jurisdictions is, prima facie, an application made in bad faith. This appears, on the face of it, to be an attempt to frustrate a competitor’s expansion into Australia in a manner which is likely to be considered as unscrupulous, underhand or unconscientious by persons adopting proper standards. This situation is sufficient to warrant rebuttal by the Applicant.”

Since the applicant’s evidence failed to rebut this, the delegate found bad faith to be established.

 

Warrior Sports Inc v Warrior Australia Pty Ltd [2020] ATMO 75 (5 May 2020)

Successful opposition by Warrior Sports to trademark registration of WARRIOR under applications filed on 29 March 2016 and 11 April 2016 for various services in class 35 and goods in class 25.

The opponent prevailed under the s59 lack of intention to use ground.

The opponent manufacturers and sells lacrosse and ice hockey equipment. Its evidence pointed to the applicant using the WARRIOR mark only for mixed martial arts clothing and accessories.

The delegate was satisfied the opponent’s evidence  raised a prima facie case of the applicant lacking the requisite intention to use the applied for mark for many of the goods and services covered by its trade mark applications and found “the Applicant’s own evidence indicates that it engaged in a misguided and deliberate strategy to register the Trade Mark with specifications that were deliberately broader than the goods and services that it intended to use the Trade Mark for.

The delegate considered the option of restricting the specifications of the applications, but referred to Apple Inc v Registrar of Trade Marks (the APP STORE case) [2014] FCA 1304 and rejected the application in its entirety.

 

Transwoods Pty Ltd v Acquire Investment Pty Ltd [2020] ATMO 76 (6 May 2020)

Successful opposition by Transwood to trademark registration of Schmeider filed on 8 March 2017 for various alcoholic beverages in class 33.

The opponent prevailed under the s62A bad faith ground.

The directors of the opponent operated a cooperage business under the trade marks SCHMEIDER and SCHMEIDER’S COOPERAGE. They leased parts of their Schmeider’s Cooperage Complex for retail use by other parties including a lease to the Waterview distillery business which ended in a dispute involving  non-payment of rent. Mr Drane was a director of that business and the applicant .

Having regard to all the circumstances, the delegate was satisfied the applicant’s conduct was of unscrupulous, underhand, or unconscientious character and in bad faith.

 

Wilsford Wines Pty Ltd v Family Wine Estates Pty Ltd [2020] ATMO 77 (7 May 2020)

Partly successful opposition by Wilsford Wines to an application for removal of its trademark registration for WILSFORD alleging non-use during the 3 years period ending on 24 April 2018.

The trademark registration dated from 14 September 1993 and covered wines, spirits, liqueurs in class 33.

The opponent traded under the name Burge Family Winemakers and there was no evidence as to use of the WILSFORD mark for any spirits or liqueurs. There was evidence showing use of the WILSFORD mark on labels for a muscat wine and the delegate was also satisfied this mark was used more generally in relation to the promotion and sale of wine by the opponent.

The delegate directed the WILSFORD mark remain on the Register for wines.

 

Crocmedia Pty Ltd v Football Nation Radio Holdings Pty Ltd [2020] ATMO 78 (11 May 2020)

Unsuccessful opposition by Crocmedia to trademark registration of Football Nation Radio filed on 21 June 2017 for various football related goods and services in classes 16, 25, 35, 38 and 41.

The opponent relied on grounds of opposition under ss 41, 42(b), 44 and 60 but failed to establish any ground.

The opponent primarily relied on use and registration of its AFL NATION mark.

Under s41, the opponent alleged the applied for mark is not capable of distinguishing the applicant’s goods and services because the words FOOTBALL NATION RADIO are descriptive of and/or connote radio-related services provided in connection with football games, provided on a national basis.  However, the delegate noted the existence of various families of registered marks containing WORLD, LAND or NATION. Given this, the delegate considered the FOOTBALL NATION part of the applied for mark to be inherently adapted to distinguish and this was not eroded by the descriptive term RADIO.

The s44 ground failed because the delegate did not consider the applied for Football Nation Radio mark to be substantially identical with or deceptively similar to the opponent’s AFL NATION mark.

the s60 ground failed because the delegate was not satisfied the evidence established the opponent’s AFL NATION mark had acquired a sufficient Australian reputation.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for 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.

 

Miyakoshi Printing Machinery Co Ltd [2020] ATMO 79 (12 May 2020)

The applicant was successful in overcoming an objection to trademark registration of MLP filed on 3 September 2018 for various printing goods in classes 7 and 16.

The Examiner initially raised an objection that MLP lacks sufficient distinctiveness because these letters are an acronym for “multi-lane printing/printer or multi-layer printing/printer”. In a subsequent report, the Examiner indicated these letters are also an acronym for “monochrome laser printers and some other abbreviations”.

The delegate agreed with the applicant that the research carried out by the examiner “is not sufficient to show either that the mark is a well-known acronym or abbreviation”. The search results did not show sufficient use of MLP, as an acronym in connection with goods of the nature of the applicant’s goods, to satisfy the delegate that MLP has any ordinary signification to any significant number of persons who will purchase, consume or trade in those goods.

 

Rochelle Lee Bogle v Hipster Holdings Pty Ltd [2020] ATMO 80 (12 May 2020)

Successful opposition by Bogle to an application under s92(4)(a) for removal of her trademark registration for Miss Chats alleging lack of intention to use as at the 9 September 2016 filing date and no use up to 16 October 2017.

The trademark registration dated from 9 September 2016 and covered food and drink as well as temporary accommodation services in class 43.

The opponent’s evidence included a business plan and referred to the opponent being a shareholder in the removal applicant as well as a dispute concerning the shareholders and licensing agreements, but indicated the Miss Chats mark being used by the removal applicant since December 2016.

The removal applicant did not file any evidence.

Under s92(4)(a), where the primary allegation relates to state of mind about the intention to use a mark in good faith, the onus on the opponent/registered owner is not high. Based on the limited evidence, the delegate, somewhat reluctantly, was satisfied the opponent had intended to operate (or participate in the operation of) a business providing the relevant services under the registered mark.

 

Thrive Collective Pty Ltd v The Ausray Group Pty Ltd [2020] ATMO 81 (13 May 2020)

Successful opposition by Thrive Collective to trademark registration of KIDS THRIVE filed on 1 September 2017 for nutritional supplements in class 5.

The opponent prevailed under the s44 ground by relying on its prior registration for THR1VE (with the numeral ‘1’ substituted for the letter ‘I’) covering a broad range of foods and beverages in classes 29, 30 and 32 as well as various services in classes 35 and 41.

The delegate considered the applicant’s class 5 goods were similar to ‘food protein for human consumption; whey protein; food preparations with added vitamins’ in class 29 covered by the opponent’s THR1VE registration; although no reasons were given for this finding.

The delegate also considered KIDS THRIVE to be deceptively similar to THR1VE.

 

CapBran Holdings LLC v Uncle Bills Australia Pty Ltd [2020] ATMO 82 (13 May 2020)

Successful opposition by CapBran to trademark registration of NUTRIBLITZ filed on 21 September 2015 for various food preparation machines in class 7.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its NUTRI BULLET trade mark which had been used in Australia since 2012 in relation to food blenders.

There was no finding that NUTRIBLITZ was deceptively similar to NUTRI BULLET (which was also registered in Australia for the same goods). Nonetheless, deceptive similarity is not required under s60 and the delegate found that “the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia adds to the likelihood of confusion taking place in the marketplace.”

 

Gulf International Lubricants Ltd v Swire Industry Limited [2020] ATMO 83 (15 May 2020)

Successful opposition by Gulf International to trademark registration of GULFPRIDE filed on 14 September 2017 for various industrial chemicals including additives for lubricants and gasoline in class 1.

The opponent prevailed under the s44 ground by relying on its prior registration for GULF covering various petroleum products including lubricants in class 4.

The delegate considered the applicant’s goods were largely identical to those covered by the opponent’s GULF registration. Further, in the context of these goods, GULFPIDE was deceptively similar to GULF.

 

Redlynch Pharmacy Pty Ltd v CPG IP PTY LTD as Trustee For The CPG IP Unit Trust [2020] ATMO 84 (18 May 2020)

Successful opposition by Redlynch Pharmacy to trade mark registration of “wholehealth” filed on 8 June 2017 for various pharmacy related services in classes 35 and 44.

The opponent prevailed under the s41 distinctiveness ground.

The delegate found the words “whole health” to be a ready way to describe goods or services directed towards holistic and integrative well-being. This meaning was reinforced by the opponent’s evidence showing use of these words in this descriptive sense both in Australia and overseas from before the filing date. The applied for mark had some modicum of inherent distinctiveness but was not sufficiently distinctive to qualify for registration.

The applicant operated various pharmacies in North Queensland trading under names containing Calanna Whole Health Pharmacy. The primary indicator of trade source was “Calanna” and the applicant’s plans for the use of the words “Whole Health” as a brand in its own right were largely aspirational. Hence, the delegate considered the applicant’s evidence was insufficient to demonstrate acquired distinctiveness through commercial use of the applied for mark.

 

World Bodyboards Pty Ltd v Body Science Properties Pty Ltd as trustee for The Body Science Properties Trust [2020] ATMO 85 (20 May 2020)

Unsuccessful opposition by World Bodyboards to trademark registration of BSC Logo shown below with a priority date of 2 April 2012 for a broad range of apparel in class 25 and retail, wholesale and distribution services in class 35.

Trademark-Registration-BSC-Logo

The application was filed on 23 May 2014, but was a divisional of an earlier application filed on 2 April 2012 for the same mark which was registered for goods in other classes.

The opponent owned a prior trademark registration shown below covering men’s clothing in class 25 and retailing services in class 35 which dated from 2008.

Trademark-Registration-BSC-Star-Logo

The delegate found the opponent’s prior registered mark was a proper objection under s44, but the applicant was able to traverse this objection by relying on prior continuous use of the applied for mark in Australia since at least 2002.

 

Jean Patou v Plexus Worldwide LLC [2020] ATMO 86 (25 May 2020)

Successful opposition by Jean Patou to trademark registration of JOY LOOKS GOOD ON YOU filed on 22 March 2018 for various cosmetic and skin care products in class 3.

The opponent prevailed under the s60 ground by relying on the Australian reputation of his well known JOY perfume

 

ESG Media Pty Ltd v Jeremy John Hague & Kate Louise Jones both as trustees for Hague Family Trust [2020] ATMO 87 (25 May 2020)

Successful opposition by ESG Media to trademark registration of CODEBREWERY filed on 18 August 2017 for various computer related services in class 42.

The opponent prevailed under the s59 lack of intention to use ground.

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

The opponent’s evidence was sufficient to raise a prima facie case that the applicant did not have a genuine intention to use the applied for mark, but rather sought registration of it to frustrate the commercial plans of the opponent.  The applicant held the codebrewery.com.au domain name and the opponent had been in discussions with the applicant to negotiate the purchase of this domain name prior to filing of the CODEBREWERY application.

The circumstances placed the applicant’s intentions at the time of filing the application under sufficient cloud as to require a plain and direct response. Accordingly, the onus shifted to the applicant to show a sufficient intention, but it failed to do so.

 

 

Mayfair Finance Group Pty Ltd v LEOWALT PTY LTD [2020] ATMO 88 (26 May 2020)

Unsuccessful opposition by Mayfair Finance to an application for removal of its trademark registration for Mayfair & Device alleging non-use during the 3 years period ending on 30 September 2017.

The trademark registration dated from 21 October 2010 and covered various financial and insurance services in class 36.

There was some evidence showing use of the registered mark together with additional matter, but the opponent did not file evidence showing this use by a purported related entity was authorised by and under the control of the registered owner. Further, the evidence was predominantly redacted emails which fell short of affirmatively rebutting the allegation of non-use.

The delegate was not prepared to exercise discretion and directed the trade mark be removed from the Register.

 

Alice Corporation PL v Fivepals Inc [2020] ATMO 89 (27 May 2020)

Unsuccessful opposition by Alice Corporation to an application for removal of its trademark registration for Alice Corporation (Stylised) alleging non-use during the 3 years period ending on 25 September 2017.

The trademark registration dated from 22 February 1999 and covered software related goods and services in classes 9 and 42 as well as business management services in class 35 and financial services in class 36. financial and insurance services in class 36.

There was no evidence positively establishing use of the registered mark during the relevant 3 years period. The opponent’s Australian business had been disrupted due to patent litigation in the USA, but the delegate was not prepared to exercise discretion and directed the trade mark be removed from the Register.

 

Sugarlean Pty Ltd v Joseph Seccas [2020] ATMO 90 (27 May 2020)

Unsuccessful opposition by Sugarlean to trademark registration of Sugarlean filed on 16 July 2018 for various class 30 goods.

The opponent relied on grounds of opposition under ss 43, 58, 59 and 62A but failed to establish any ground.

The opponent filed a request for an extension to file evidence in support, but this request was filed under the wrong provision and did not have the relevant fee. Consequently, this extension was not taken as filed and so the opponent could not rely on any evidence. The opponent belatedly attempted to file some evidence out of time, but no reasons were given for the delay and so that material could not be taken into account.

Since the opponent carried the onus of proof and there was no evidence to support any of the grounds, the opposition failed. Although the s43 ground was particularised in the Statement of Grounds and Particulars, those particulars went to alleged confusion based on the opponent’s earlier use of the identical mark and not to any connotation inherent in the applied for mark .

 

Adrian Moses v Matutino Films Pty Ltd [2020] ATMO 91 (27 May 2020)

This concerned an opposition by Moses to trademark registration of The World Cup of Film filed on 17 November 2017 for various entertainment related services in class 41.

The applicant had filed two separate requests for extension to file evidence, but they were refused.

The applicant subsequently filed material some 2 months after the initial due date and indicated the delay was attributable to personal matters.

The delegate refused to allow this late-filed material into evidence. The reasons relied upon by the applicant for the delay did not substantiate why the applicant’s personal difficulties prevented filing of evidence in a timely manner. Further, the material belatedly filed contained little probative or cogent information which pointed to this material being crucial to the ultimate decision or in the public interest.

 

Happy Skincare Pty Ltd ATF Breckell Family Trust v Happy Skin Co Pty Ltd [2020] ATMO 92 (27 May 2020)

This concerned an opposition by Happy Skincare to trademark registration of Happy Skin Co filed on 25 October 2018 for various personal care products in class 3 and hair removal devices in class 8.

The opponent was granted an extension of time to file a Statement of Grounds and Particulars (SGP) on the basis of error or omission by the opponent’s agent, namely a misunderstanding between the attorney and client, which resulted in  the SGP being filed a day late.

Bega Cheese Limited v Saputo Cheese USA Inc [2020] ATMO 93 (28 May 2020)

Successful oppositions by Bega Cheese to trademark registration of the three cartoon character marks shown below filed on 1 March 2018 for cheese in class 29.

Trademark-Registration-Saputo-Cheese-Cartoon-Character-Bicycle

Trademark-Registration-Saputo-Cheese-Cartoon-Character-Parachute

Trademark-Registration-Saputo-Cheese-Cartoon-Character

The opponent prevailed under the s44 ground by relying on its prior registrations for similar cartoon character marks covering cheese and cheese products.

The delegate considered Saputo’s cartoon character mark (being the plain figure without the parachute or bicycle) to be substantially identical with the opponent’s registered mark shown below:

Trademark-Registration-Bega- Cheese=Cartoon-Character-1

The delegate concluded “both cheese stick figures contain ‘hair’ that is chunky and both have a lock of hair curling forwards to the left over the face while not directly facing forward but at a 45 degree angle to the left. I am satisfied that a total resemblance exists between the two cheerful, animated cheese sticks with chunky hair and animated gestures.”

The delegate considered Saputo’s other cartoon character marks (being the figures with the parachute and bicycle) to be deceptively similar to the opponent’s registered mark discussed above as well as its other registered marks shown below:

Trademark-Registration-Bega-Cheese-Cartoon-Character-2

Trademark-Registration-Bega-Cheese-Cartoon-Character-3

Trademark-Registration-Bega-Cheese-Cartoon-Character-4

Trademark-Registration-Bega-Cheese-Cartoon-Character-5

The delegate accepted the opponent’s argument that its five registered marks constituted a ‘family of marks’ comprising a bipedal, smiling cheese stick figure with chunky hair and animated gestures, and concluded “the addition various graphic devices such as the bicycle and the parachute to the applicant’s cheese stick figures but these variations do not detract from a common identity as a smiling cartoon cheese stick with chunky hair and animated gestures. Contrary to the applicant’s arguments, I am in agreement with the opponent that once the common element of the smiling cartoon cheese stick character is imperfectly recalled, it is likely to induce the public into believing that goods branded with the trade marks emanate from the same trade source”.

 

Myriad Women’s Health Inc v 4Cyte Pathology Pty Limited [2020] ATMO 94 (28 May 2020)

Successful opposition by Myriad Women’s Health to trademark registration of 4CYTE filed on 6 July 2017 for goods and services in classes 16, 39, 42 and 44 including various laboratory, medical and healthcare services.

The opponent prevailed under the s44 ground by relying on its prior registration for FORESIGHT covering diagnostic testing apparatus in class 10 and genetic testing services in class 44. It was filed on 8 August 2017 but had the benefit of an earlier priority date, namely 9 February 2017 based on a corresponding US application.

The delegate considered the applicant’s goods and services to be similar or closely related to the goods and services covered by the opponent’s FORESIGHT registration; although the reasons given were very brief. Also, the delegate considered the applied for 4CYTE mark to be deceptively similar to the opponent’s registered FORESIGHT mark. The delegate found the conceptual and aural similarities gave rise to a real and tangible danger of confusion.

The delegate’s reasons did not include an analysis of the alleged ‘conceptual’ similarity, particularly as “foresight” is a familiar English word with a known meaning and “cyte” is a suffix denoting a cell which would be readily familiar to the target market for the applicant’s goods and services.

The applicant has filed an appeal.

 

Northern Rivers Kart Club Inc v Australian Karting Association Ltd [2020] ATMO 95 (29 May 2020)

This concerned an opposition by Northern Rivers Kart Club to trademark registration of NSW YOUNG GUNS & Device filed on 22 November 2018 for various entertainment and sporting related services in class 41.

The opponent’s request to amend its Statement of Grounds & Particulars by substituting s58 for the s58A ground was allowed.

The delegate noted that the s58 ground was only applicable where the relevant trade mark application had been accepted under s44(4) which was not the case here. The opponent had provided sufficient particulars to support the s58 ground based on common law ownership, but was not professionally represented and had inadvertently nominated the s58A ground. As such, there was a relevant error or omission and it was appropriate to exercise discretion to allow the amendment.

 

Capricorn Society Limited v Richa Koshal [2020] ATMO 96 (29 May 2020)

Unsuccessful opposition by Capricorn Society to trademark registration of CAPMAX filed on 10 February 2017 for various accounting and tax related services in class 35 as well as financial and insurance related services in class 36.

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

Under s44, the opponent relied on its various prior registrations for trade marks commencing with CAP, particularly CAPmobile, CAPezifinance and CAPRICORN which each covered similar services in class 36. The opponent argued these were a family of marks commencing with the prefix CAP-, but the delegate characterised this prefix as being of limited distinctiveness in the context of the relevant services. The delegate considered the applied for mark was not substantially identical with or deceptively similar to any of the opponent’s prior registered marks, so this ground failed.

Under s58, the opponent argued that the applicant did not have the relevant intention to use or authorise the use of the applied for CAPMAX mark. Rather, the applicant was the sole shareholder, directory and secretary of Capmax Accountants Pty Ltd, and the opponent relied on Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 156 in contending that company was the proper owner. However, this company was incorporated on 24 January 2019, some 2 years after filing of the trade mark application. The delegate observed “it is difficult to say that the applicant, at the time of making the trade mark application, was acting for and on behalf of a company as opposed to in their own right, when the company did not exist.” Consequently, the delegate was not satisfied the applicant was not the proper owner.

Under s60, the delegated was satisfied the opponent’s CAPRICORN mark had acquired a relevant Australian reputation, but not any of its other CAP- prefix marks. However, given the differences between this mark and the applied for CAPMAX mark, the delegate was not satisfied as to there being a likelihood of deception or confusion.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for 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.