Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – May 2021

R & R C Bond (Wholesale) Ltd [2021] ATMO 36 (10 May 2021)

The applicant was successful; in overcoming a distinctiveness objection raised during examination of its application for trademark registration of CHURCHILL filed on 20 March 2019 for various vehicle parts in class 12.

The Examiner’s objection was based on CHURCHILL being the name of a town in Victoria.

The delegate noted this town is located in central Gippsland and has a population of 4,500 people. It was originally developed to house workers involved in the construction of the Hazelwood power station built between 1964 and 1971 and which was decommissioned in 2017. It is a residential town rather than a manufacturing town.

The delegate proceeded on the assumption that, to a significant number of relevant persons, CHURCHILL has as its ordinary signification the Victorian town. He then when on to consider whether it is reasonable to suppose car parts could in the future be produced there. The relevant question to be asked is, ‘How likely is it that a person choosing to start up a business manufacturing vehicle parts would choose to do so in Churchill?’. The delegate answered this by finding that other traders are highly unlikely to legitimately need to use CHURCHILL for its geographical significance in respect of vehicle parts. 

Hence, the delegate was satisfied that CHURCHILL is inherently adapted to distinguish the applicant’s goods from those of other traders.

Diana Todd v Balance Tax Pty Ltd [2021] ATMO 37 (12 May 2021)

Successful opposition by Todd to an application for removal of her trademark registration for BALANCE TAX alleging no intention to use and no good faith use up to 16 July 2019.

The registration dated from 25 August 2017 and covered tax and related services in class 35. It has since been assigned to Stars & Cars Pty Ltd.

The removal applicant contended that the opponent was made aware of its company (which also provided tax agent services) before filing of the BALANCE TAX trademark application and hence any intention to use this mark was not in good faith.

However, the onus on an opponent to prove a good faith intention is not high and the delegate was satisfied that, as at 25 August 2017, the opponent did intend to operate a business and provide relevant tax services under the BALANCE TAX trade mark. Further, the opponent had already created a website and social media accounts, engaged in promotional activities, procured business materials and issued invoices under the BALANCE TAX trade mark. The good faith requirement merely requires an intent to use a mark for ordinary commercial purposes which was satisfied here.

The delegate rejected the removal applicant’s contention that the evidence did not disclose use of BALANCE TAX word mark. The delegate considered that use of Balance Tax Accountants, Balance Tax Accounting and the balance Tax Accountants Logo shown below all constituted use of the BALANCE TAX word mark.

The alterations and additions did not substantially affect the identity of the BALANCE TAX word mark.

The delegate also rejected the removal applicant’s contentions that it was unsafe for the opponent to rely on information obtained from the Internet Archive Wayback Machine and screenshots of its website and social media pages. The delegate noted the Registrar is not bound by the rules of evidence. Further, the delegate pointed to Federal Court authority in Dyno Nobel Inc v Orica Explosive Technology Pty Ltd (No.2) [2019] FCA 1552 and Pinnacle Runway Pty Ltd v Triangl Ltd [2019] FCA 1662 where this sort of evidence was allowed. Hence, the delegate accepted the opponent’s evidence on this aspect, but there was other evidence which also corroborated commercial use of the registered mark.

Pendel Group Pty Ltd v FMTM Distribution Ltd [2021] ATMO 38 (12 May 2021)

Unsuccessful opposition by Pendel Group to an application for removal of its trademark registration for MARINER Aquatic Logo shown below alleging no good faith use in the 3 years period ending 22 April 2019.

The registration dated from 24 November 1997 and covered watches and their parts in class 14.

The removal applicant objected to parts of the opponent’s evidence in reply because it contained material which was not strictly in reply to the removal applicant’s evidence in answer. This material was not considered, primarily because it lacked probative value.

The registered owner of the mark was Soderberg Group Pty Ltd which entered into external administration in August 2018. The opponent’s evidence indicated it acquired the trade mark registration from the liquidator on 11 September 2018. However, the document used to record the assignment indicated a  date of 30 July 2019. The assignment was recorded by IP Australia on 7 August 2019. The delegate considered it more likely that the assignment occurred on 30 July 2019 which was after the removal application was filed and hence, to rebut the allegation of non-use, the opponent needed to show use of the registered mark by or with the authority of the then registered owner, namely Soderberg Group Pty Ltd.

The evidence relied upon by the opponent was given by a person with no connection with Soderberg Group Pty Ltd and the examples relied upon were undated. The delegate was not satisfied this evidence established use of the registered mark during the relevant period.

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

Little River Band Pty Ltd v Victor Marshall [2021] ATMO 39 (17 May 2021)

Successful opposition by Little River Band to applications for removal of its trademark registrations for LITTLE RIVER BAND alleging no good faith use in the 3 years period ending 14 December 2018.

The registrations dated from 9 January 1989 and 1 November 2002. They covered entertainment services in class 41 and various audio-visual related goods in class 9.

The opponent was the trustee of a trust set up to cater for changes in members of the band over the years. The opponent was acknowledged as the owner of the relevant trade mark rights.

The delegate distinguished Musidor BV v Robert William Tansing [1994] FCA 1242 (where the use of Rolling Stones was not trade mark use and was merely a description that the recording contained songs performed by that band) and considered the opponent’s evidence supported trade mark use of the band name. There was also evidence of licensed use of the trade mark and CDs and vinyl LPs in Australia being offered for sale in Australia during the relevant period sufficient to show use for the registered class 9 goods. There was also evidence of streaming of the opponent’s music in Australia via subscription services sufficient to show use for entertainment services in class 41.

Hence the delegate was satisfied there was genuine commercial use of the LITTLE RIVER BAND mark by or with the authority of the registered owner during the relevant period for the registered goods and services.

EMI (IP) Limited v Spotlight Pty Ltd [2021] ATMO 40 (25 May 2021)

Unsuccessful opposition by EMI to trademark registration of ABBEY ROAD filed on 8 September 2017 for various yarns in class 23.

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

Under s44, the opponent relied on its prior registration for Abbey Road Studios covering various goods and services in classes 9, 16, 18, 25, 38, 41 and 42. However, the delegate considered none of the applicant’s goods were similar or closely related to any of the opponent’s registered goods or services; so that ground failed.

The s60 ground failed because the opponent’s evidence did not establish any of the opponent’s trade marks containing or consisting of ABBEY ROAD had acquired an Australian reputation.

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

Under the s62A bad faith ground the delegate stated: “I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the word ‘Abbey Road’ in respect of yarn is a decision made in bad faith, in circumstances where there is little or no use of ‘Abbey Road’ in Australia for any purpose, and to the extent that the Opponent has any reputation in ‘Abbey Road’, such a reputation is in respect of a recording studio in London.” 

Brocshots Australia Pty Ltd v Benjamin Silver [2021] ATMO 41 (25 May 2021)

The opponent was unsuccessful in challenging an amendment to the owner of an application for trademark registration of BROC SHOT filed on 15 August 2018 for goods and services in classes 5, 32 and 35.

The trademark application was originally filed in the name of Cellex Holdings Limited and IP Australia allowed an amendment to reflect Benjamin Silver as owner. At the time of filing, Cellex Holdings Limited was not in existence. It was incorporated in Hong Kong on 24 August 2018. Nonetheless, the delegate upheld the validity of this amendment.

The delegate considered the interplay between s27 and Regulation 4.2 and noted that “Regulation 4.2(1)(d) requires the application include ‘information that allows the identity of the applicant to be established’ and does not contain a requirement that the application specify the name of the applicant.” The delegate stated: “… the fact that Cellex was not a legal entity at the time of filing does not mean that the application did not meet the filing requirements. From the evidence it is clear that there was always a single person involved in the development of the Trade Mark, directions to accountants and legal representatives, and the care, conduct and financial responsibilities of all matters pertaining to the Trade Mark application, namely, Mr Silver. It is clear that Mr Silver always had a real intention to make the application to protect the Trade Mark that he developed for his business and that sufficient information was provided for him to be contacted/identified regarding the application. I am satisfied that the filing requirements under section 27 have been met.

The delegate referred to s65 (7) and (8) which provide:

 (7)  An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.

(8) Without limiting subsection (7), if the application specifies an applicant without legal personality, an amendment may be made under that subsection to change the reference to the specified applicant to a reference to a person with legal personality if that person can be identified as having made the application.

The delegate concluded, at paragraph 30:As in the same instance where a business name is tendered, there is explicit scope for section 65(8) to operate to permit an amendment to the application to indicate the person who caused the application to be filed, as the applicant. This is formally noting the identity of the original applicant rather than substituting one legal entity for another (as was the case in Crazy Ron’s). That is, the amendment to the application will not change who is applying for the registration of the trade mark but will correctly identify the person with legal personality who in fact filed it. I am satisfied that section 65(8) was the appropriate section to use for the amendment and I allow the amendment under section 65(8).”

It remains to be seen whether this analysis will withstand judicial scrutiny.

Warehousing Equipment Pty Ltd v Troden Equipment Pty Ltd [2021] ATMO 43 (26 May 2021)

Unsuccessful opposition by Warehousing Equipment to trademark registration of X-CART logo shown below filed on 14 December 2018 for various trolleys in class 12.

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

Under s44, the opponent relied on a prior registration for Clax Cart owned by another party which covered relevant class 12 goods but the delegate did not consider the respective marks to be deceptively similar.

Under s60, the opponent relied on the Australian reputation of the Clax Cart mark and the delegate was satisfied the evidence support a limited reputation amongst private and commercial consumers of carts. However, the delegate was not satisfied as to a likelihood of deception or confusion.

The opponent also relied on the reputation of the Clax Cart 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 asserted the applicant produced a near replica of the Clax Cart product to undermine the legal rights of the owner of goodwill in the Clax Cart mark. However, the delegate was not satisfied that mere awareness of the cart product and the Clax Cart mark is a sufficient basis to find that the application to register the X-CART Logo mark was made in bad faith.

Neurim Pharmaceutical (1991) Ltd v Clariant AG [2021] ATMO 44 (26 May 2021)

Unsuccessful opposition by Neurim Pharmaceutical to trademark registration of B-CIRCADIN filed on 22 March 2018 for various chemical and botanical ingredients for use in the cosmetic industry in class 1. Applications of these goods in the pharmaceutical industry were expressly excluded.

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 prior registration for CIRCADIN covering preparations and drugs for pharmaceutical use in class 5. The delegate considered the respective marks to be deceptively similar, but the respective goods were not similar. There was a lack of evidence demonstrating either common trade origins or distribution and supply channels for the respective goods and the delegate noted the differences between the purposes and nature of these goods.

Under s60, the opponent relied on use of its CIRCADIN mark in Australia since 2010 for prescription sleep medication and the delegate was satisfied this evidence demonstrated the requisite reputation. However, the delegate did not consider there would be a likelihood of deception or confusion. The delegate noted that people would not necessarily be aware the opponent’s medication is available only by prescription. Nonetheless, the reputation of the CIRCADIN mark is intrinsically tied to a narrow field of products, namely sleep medication which is very different to the applicant’s goods.

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

The s58 ownership ground failed at the first hurdle because the delegate did not consider the applied for B-CIRCADIN mark to be substantially identical with the opponent’s CIRCADIN mark.

Valiant Integrated Services LLC [2021] ATMO 45 (27 May 2021)

The applicant was able to overcome a proposal to revoke acceptance of its application for trademark registration of the composite mark shown below filed on 9 March 2020 for various services in classes 35, 37, 39, 41, 42, 43, 44 and 45.

The proposed revocation of acceptance was based on an earlier registration for VALIANT covering various services in classes 35 and 36. This registration was also raised as an objection during examination, but the Examiner was satisfied with amendments to the applicant’s specification. Following a review by IP Australia, it was contended that the broad business advisory and consultancy services claimed in class 35 by the earlier VALIANT trade mark conflicted with the applicant’s various claims in class 35 such as the claims for procurement as well as subsistence and commodity supply chain services.

The delegate was not satisfied, under the first limb of s38, that the trade mark application should not have been accepted.

The delegate noted the fact that the examiner did consider the conflicting trade mark is a circumstance existing at the time of acceptance which may be taken into account. Having said that, it is not a determinative factor, because despite all best efforts and due consideration of the authorities an examiner may nevertheless come to a conclusion that is incorrect in law.

It ultimately came down to a comparison of the respective services and the delegate did not consider the applicant’s claims to “ Facility Management; Subsistence and commodity supply chain services being in the field of demand forecasting order management and analysis, purchasing management and strategic sourcing, and inventory management and asset management; Procurement of contracts (for others); procurement services for persons in need, namely purchasing food and non-food items and services such as transportation and warehousing of the aforementioned items for persons in need” to be similar to the “businesses consultancy and business advisory services” covered by the prior VALIANT registration. The delegate noted a common sense business view is required and considered it unlikely that a person seeking the applicant’s services would approach a general business consultant or advisor in order to obtain them. The delegate also considered that the applicant’s “facility management” and “procurement of contracts (for others)” services could not, without evidence, be properly considered similar to businesses consultancy or business advisory services for the proposed revocation to stand on its own merits.