Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – November 2019

Lidl Stiftung & Co. KG [2019] ATMO 156 (1 November 2019)

An application for trademark registration of #SANTACLARA filed on 3 April 2017 for goods and services in classes 14, 18, 25, 28, 29, 30, 31, 32 and 35 was refused except for the goods in class 31.

The Examiner raised an objection under s41 based on the geographical significance of SANTA CLARA.

While the Examiner was prepared to allow the application to proceed for goods in classes 29, 30 and 31, the delegate found otherwise and permitted the application to proceed only for goods in class 31.

 

Andries Mostert and Yoko Luscher v Accolade Wines Australia Limited [2019] ATMO 157 (1 November 2019)

Unsuccessful opposition by Mostert and Luscher to trademark registration of BRAVE NEW WORLD filed on 20 September 2016 for alcoholic beverages in class 33.

The opponents relied on grounds of opposition under ss42(b), 58 and 60 but failed to establish any ground.

Under the s58 ownership ground the opponents relied on their prior use of BRAVE NEW WINE but the delegate did not consider this mark to be substantially identical wit BRAVE NEW WORLD.

Under the s60 ground the opponent’s relied on their Australian reputation derived from use of the BRAVE NEW WINE mark for wine since December 2015, but the delegate was not satisfied their evidence established a sufficient reputation.

The opponents also relied on their reputation 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.

 

eBay Inc v Edutec Limited [2019] ATMO 158 (7 November 2019)

Successful opposition by eBay to trademark registration of Studybay (Stylised) as shown below filed on 14 June 2017 for various services in classes 38 and 41.

Trademark-Registration-Studybay

The opponent prevailed under the s60 ground based on the Australian reputation of its eBay trade mark.

 

MS Marketing Inc. v EZ Imports Pty Ltd [2019] ATMO 159 (8 November 2019)

Successful opposition by MS Marketing to trademark registration of EZ MOBI CRUISER Logo shown below filed on 16 August 2017 for mobility equipment in class 12.

Trademark-Registration-EZ-Mobi-Cruiser-Logo

The opponent prevailed under the s58 ownership ground, relying on its prior Australian use of its EZ Lite Cruiser Logo mark shown below for various mobility aids.

Trademark-Registration-EZ-Lite-Cruiser-Logo

The delegate was satisfied the opponent’s Logo mark was substantially identical with the applied for mark. The use relied upon by the opponent was for the same kind of goods as those covered by the applied for mark, with the possible exception of “powered golf carts and buggies; spare parts for powered golf carts”. However, the delegate commented that “when it comes to these powered golf cart goods in class 12, it is for the applicant to establish a principled basis to distinguish between the goods that are the ‘same kind of thing’ and those that are not. In the absence of the applicant providing me with a principled basis, I find the section 58 ground of opposition established for all of the goods in class 12.

 

Red Rooster Foods Pty Ltd [2019] ATMO 160 (12 November 2019)

This concerned Red Rooster’s applications for trademark registration of its (1) Tender Loving Chicken & Chicken Device and (2) Chicken Device marks as shown below filed on 15 December 2015 for foodstuffs and food related services in classes 29, 30 and 43.

Trademark-Registration-Tender-Loving-Chicken-Logo

Trademark-Registration-Red-Rooster-Chicken-Device

The delegate was prepared to accept the Chicken Device mark under the honest concurrent use provision, but refused registration of the composite Tender Loving Chicken & Chicken Device mark

Both applications encountered an examination objection based on the prior trademark registration shown below which covered similar goods and services in classes 29, 30, 35 and 43.

Trademark-Registration-Chicken-Hub-Chicken-Device

The owners of this prior registered mark operate a store in South Australia and provide catering services.

The delegate agreed with the Examiner that the applied for marks were deceptively similar to the prior registered mark.

The applicant relied on honest concurrent use of the applied for marks under s44(3)(a). However, the delegate considered that the context and manner of use of the phrase ‘tender loving chicken’ in proximity to either the applicant’s Red Rooster house mark or the Chicken Device mark was usage separate to each of these marks and not usage of the applied for composite Tender Loving Chicken & Chicken Device mark. Hence, honest concurrent use could only be considered for the Chicken Device mark.

Honest concurrent use needs to be assessed as at the 15 December 2015 filing date.  The applicant first became aware of the prior registered mark on 27 June 2014 and made a business decision to proceed with rebranding to its Chicken Device mark. The delegate accepted this mark was adopted honestly in 2014, but noted that the business decision to proceed with the rebrand with knowledge of the prior mark meant that it was inappropriate for the applicant to obtain the balance of relative inconvenience. Although the period of use relied upon (being only some 15-16 months prior to the filing date) was relatively short, the applicant’s use of the Chicken Device mark was extensive and the delegate  considered it appropriate to apply the honest concurrent use provision in favour of the applicant’s Chicken Device mark.

The delegate then went on to consider the applicability the other circumstances provision under s44(3)(b) for the applicant’s composite Tender Loving Chicken & Chicken Device mark but, given the little evidence of use of this composite mark and the real risk of deception, the delegate was not persuaded that s44(3)(b) was applicable.

 

Hao Qi v Nick Wright [2019] ATMO 161 (12 November 2019)

Partly successful opposition by Hao Qui to an application for removal of his trademark registration for MICOCO, alleging lack on intention to use and non-use up to 25 September 2017.

The trademark registration dated from 23 March 2015 and covered various bags and apparel in classes 18 and 25.

The filing of a trademark application is regarded as prima facie evidence of intention to use. The opponent also filed evidence as to registration of the company name Micoco Australia Pty Ltd on 18 March 2015 and purchase of the micoco.com.au domain name later that year. The opponent has been running a women’s dress business under the MICOCO brand in China for 5 years and would like to open a fashion house in Surry Hills, Sydney, to sell women’s dresses under the MICOCO brand.

The delegate allowed the MICOCO trade mark to remain on the Register only for “dresses and evening dresses”.

 

Star Television Productions Limited v Star Entertainment Group Limited [2019] ATMO 163 (13 November 2019)

Unsuccessful opposition by Star Television to an application for removal of its trademark registration for Star & Device shown below, alleging non-use during the 3 years period up to 24 October 2016.

Trademark-Registration-Star-TV-Logo

The trademark registration dated from 6 December 2000 and covered various goods and services in classes 16, 38, 41 and 42.

The opponent is a subsidiary of Star Group Limited which is owned by Twenty-First Century Fox, Inc. It asserted the registered mark and other marks substantially identical with the registered mark had been used by various local distributors in connection with various Star television channels in Australia.

The delegate found the registered mark was used on two partially redacted invoices which were issued by another subsidiary, Star India Private Limited (SIPL) after the relevant date but purported to cover license fees incurred during the relevant period relating to the television channels including STAR Plus SEA and STAR Gold (ME).

There was no evidence corroborating the corporate relationship or corporate governance. Rather, a mere statement that the opponent and SIPL are wholly owned subsidiaries of Star Group Limited. Consequently, the delegate was not satisfied the evidence demonstrated a unity of purpose and was not satisfied there was authorised use of the registered mark during the relevant period.

The delegate went on to consider whether discretion might be exercised in favour of leaving the mark on the Register, but found that the opponent had not met its burden of persuasion and therefor declined to exercise discretion and directed the mark be removed from the Register in its entirety.

 

Southcorp Brands Pty Ltd v Modern Ancient Brands Pty Ltd [2019] ATMO 164 (19 November 2019)

Successful oppositions by Southcorp to trademark registration of Treasure Chest and the two composite marks shown below each filed on 25 February 2015 and covering alcoholic beverages in class 33.

Trademark-Registration-Galatea-Logo

 

Trademark-Registration-Skeleton-Horse-Logo

The opponent prevailed under the s62A bad faith ground.

The opponent is the successor in title of Woodley Wines Pty Ltd and common law owner of various brands in the Treasure Chest series which featured images of Australian history almost identical to the applied for composite marks.

The applicant did not file any evidence and was satisfied its conduct in applying for registration of iconic wine brands fell short of the standards of acceptable commercial behaviour and was in bad faith.

 

E.G. Tiger Outsourcing Ltd v Thumbtack, Inc [2019] ATMO 165 (20 November 2019)

Unsuccessful opposition by Tiger to an application for removal of its trademark registration for THUMBTACK, alleging lack on intention to use and non-use up to 15 August 2017.

The trademark registration dated from 28 January 2016 and covered a broad range of services in class 35.

The opponent asserted that it obtained a domain name and created graphics and software for the product which would be available at the end of 2018 but, despite the removal applicant challenging the intention to use the mark for the broad range of class 35 services, the opponent did not provide any documentary evidence supporting those assertions.

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

 

Louise Causon v Timothy Scott [2019] ATMO 166 (22 November 2019)

Successful opposition by Causon to trademark registration of ANAMALZ filed on 14 December 2017 for various toys in class 28.

The opponent prevailed under the s58 ownership ground.

The opponent relied on prior use of the identical mark for toy animal figures. The applicant was the opponent’s ex-husband and contended he was the true owner of the ANAMALZ mark. However, the evidence did not unequivocally support that contention.

 

Sociability Pty Limited [2019] ATMO 167 (22 November 2019)

An application for trademark registration of Finger Tape Logo shown below filed on 19 May 2017 for various bandages in Class 10 was refused for lack of distinctiveness.

Trademark-Registration-Finger-Tape-Logo

During examination, an objection was raised that the applied for mark indicates goods that are tape or are intended for taping the fingers. The Japanese katakana characters being presented in minor font and are the direct equivalent of the English words in the mark.

The applicant filed evidence of use of the mark from 2015 but sales revenue and promotional expenditure were very small.

The hearing office agreed with the Examiner and rejected the trade mark application.

 

Deanna Campese v JJ&Co Tech Pty Ltd as trustee for JJ&Co Tech Trust [2019] ATMO 168 (22 November 2019)

Partly successful opposition by Campese to trademark registration of LASHD filed on 7 September 2017 for various class 35 services.

The opponent owned a prior registration for the identical mark in classes 3 and 8.

The full text of the decision was unavailable, but the opponent prevailed to a limited extent under the s58 ownership ground resulting in a restriction to the applicant’s class 35 services.

The s44 ground of opposition was not established.

 

Jak Agency International Pty Ltd v JAK Organics Pty Ltd [2019] ATMO 169 (29 November 2019)

Jak Agency successfully opposed trademark registration of JAK filed on 31 May 2016 for various skincare and cosmetic products in class 3, but failed in its opposition to registration of JAK BABY filed on the same day for goods in classes 3 and 5.

The opponent prevailed in the JAK opposition under the s58 ownership ground by relying on prior use of its JAK Agency Pty Ltd trade mark.

For the JAK BABY opposition, the opponent also relied on grounds of opposition under ss42(b) and s60, but failed to establish any ground.

The opponent was involved in the design and development of various personal care products which were sold under other brands. The JAK AGENCY trade mark did not appear on the front of the label or packaging, but rather was used with text indicating the opponent designed, developed and imported the relevant products which it then wholesaled to retailers as shown below. The opponent promoted itself to retailers as a private label partner.

Trademark-Registration-JakAgency-Label

The s60 ground failed because the delegate was not satisfied the opponent’s JAK AGENCY trade mark had acquired a relevant reputation among the target audience for the applicant’s goods. Rather, its reputation was confined to retailers with which it deals.

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. However, given the delegate’s finding under s60, the s42(b) ground also failed.

Rather curiously, under the s58 ground, the delegate compared the applied for marks with JAK Agency Pty Ltd. The delegate considered this in the context of the label shown above and found there to be trade mark use by the opponent of JAK Agency Pty Ltd (which was also use as a company name) and found it to be substantially identical with JAK, but not JAK BABY