Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – November 2020

Cork & Chroma Pty Ltd v Cocktails & Canvas Asset Corp Pty Ltd [2020] ATMO 171 (3 November 2020)

Successful opposition by Cork & Chroma to trademark registration of CORK & CANVAS Logo shown below filed on 21 December 2017 for various services in class 41.

The opponent prevailed under the s60 ground based on the Australian reputation of its CORK & CHROMA trade mark used since mid-2013 in connection with its art studio offering classes where attendees learn to paint while consuming alcohol.

The applicant conducts a directly competitive business initially under the COCKTAILS AND CANVAS name and brand. This business subsequently re-branded in December 2016 to CORK & CANVAS.

The opponent’s evidence included instances of actual confusion since the applicant’s re-branding.

This decision is currently under appeal.

The Sydney Opera House Trust v Australia China Economics, Trade & Culture Association Incorporated [2020] ATMO 172 (9 November 2020)

Unsuccessful opposition by The Sydney Opera House Trust to trademark registration of the composite mark shown below filed on 25 January 2018 for a range of services in classes 35, 41 and 42.

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

Essentially, the opponent relied on prior use and registration of marks for representations of the Sydney Opera House and argued that the public would be confused or misled into believing use of the applied for mark gives rise to some connection with it.

The delegate provided a detailed discussion of s43, particularly its application to cases where the connotation in a mark raises an implication of sponsorship, endorsement or association. In the context of the applied for services, the delegate considered the implication to be sufficiently indirect.

Golden Cala Trading Est v Florian Mack [2020] ATMO 173 (9 November 2020)

Successful opposition by Golden Cala to trademark registration of the lens.ME Logo mark shown below filed on 4 September 2017 for optical related goods and services in classes 9 and 44 as well as online retail services relating to beauty and cosmetics in class 35.

The opponent prevailed under the s58 ownership ground. The delegate provided a detailed discussion on whether a third party, Sky Optical LLC (an entity connected with the applicant) which used the LENS ME mark in Australia from 4 November 2015 did so with the authority of the applicant and found against the applicant. The evidence was insufficient to show the requisite control as a 4 November 2015. As a result, the delegate considered Sky Optical LLC was the true owner of the LENS ME mark.

Gap (ITM) Inc v Spark Health Australia Pty Ltd [2020] ATMO 175 (10 November 2020)

Successful opposition by Gap to trademark registration of CLOTHING THE GAP (plain word and stylised applications) filed on 7 August 2018 for various apparel in class 25.

The opponent prevailed under the s44 ground by relying on its prior registrations for GAP (plain word and stylised versions). The delegate considered the applied for mark was deceptively similar to GAP. The applicant could not rely on prior continuous use under s44(4).

Bayerische Motoren Werke AG v Electracom Pty Ltd [2020] ATMO 176 (10 November 2020)

Successful opposition by BMW to an application for partial removal of its trademark registration for its BMW Logo alleging no good faith use in relation to certain class 9 registered goods for the 3 years period ending on 20 November 2018.

The trademark registration dated from 12 December 2011 and covered various goods in classes 3, 8, 9, 11, 12, 14, 27, 28, 29, 30 and 32.

The delegate found BMW’s evidence established use of the registered mark only for sunglasses, but exercised discretion to leave the mark on the Register for the remaining class 9 goods.

NDA Brands Pty Ltd v Nature One Dairy Pty Ltd [2020] ATMO 177 (13 November 2020)

Unsuccessful opposition by NDA Brands to trademark registration of Nature One Dairy Logo shown below filed on 22 February 2018 for milk related goods in classes 5 and 29.

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

Under s44, the opponent relied on its prior registrations for NATURE’S DAIRY covering similar goods, but the delegate considered the applied for mark was not deceptively similar.

Under s60, the opponent relied on its use of the NATURE’S DAIRY mark since 2015 for infant formula and milk powders, but the delegate was not satisfied the evidence established a requisite 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.

Caddee Pty Ltd v Stretch Lab Franchise LLC [2020] ATMO 178 (16 November 2020)

Unsuccessful oppositions by Caddee to trademark registration of STRETCH LAB with priority dates of 1 August 2018 and 2 October 2018 for various fitness related services in class 41.

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

Under the s58 ownership ground, the opponent relied on a business name registration for The Stretch Lab dating from 25 May 2018 and use of this name from 6 July 2018. However, the evidence was insufficient to establish the requisite prior trade mark use of this phrase.

The s58 and s42(b) grounds also failed for lack of evidence establishing Australian reputation.

Live Fashion Group Pty Ltd atf Live Fashion Unit Trust v Live Roupas Esportivas Ltda [2020] ATMO 179 (17 November 2020)

Successful opposition by Live Fashion Group to an application for removal of its trademark registration for LIVE alleging no good faith use in relation to the registered services for the 3 years period ending on 25 January 2019.

The trademark registration dated from 20 December 1995 and covered various retailing and wholesaling services in class 42, particularly relating to clothing and fashion goods.

The delegate found the opponent’s evidence established use of the registered mark during the relevant period.

Swole Gym Wear Group Pty Ltd v Evan Berard and Mark Tucker [2020] ATMO 180 (24 November 2020)

Unsuccessful opposition by Swole to trademark registration of SWOLLEN SOCIETY filed on 25 July 2017 for various apparel in class 25.

The opponent relied on grounds of opposition under ss 44 and 62A but failed to establish either ground.

Under s44, the opponent relied on its prior trademark registrations for Swol and Swole covering relevant goods in class 25. However, the delegate did not consider the applied for mark to be deceptively similar to either of these registered marks.

The s62A bad faith ground also failed. Merely being put on notice of the opponent’s marks and proceeding with a trade mark application was insufficient to establish bad faith, particularly given the differences in the respective marks.

Horizons (Asia) Pty Ltd v Enagic Co Ltd [2020] ATMO 181 (24 November 2020)

Unsuccessful opposition by Horizons to an application for removal of its trademark registration for KANGEN alleging no good faith use in relation to the registered goods for the 3 years period ending on 30 June 2018.

The trademark registration dated from 10 January 2009 and covered various goods in classes 11 and 32.

The opponent’s evidence related to use of the KANGEN mark during the relevant period. This use was by Kangen Air & Water Technologies Australia and Water Online Australia, but the delegate was not satisfied it was authorised by the registered owner.

The delegate was not prepared to exercise discretion to leave the mark on the Register.

Asustek Computer Incorporation [2020] ATMO 182 (27 November 2020)

The applicant was able to overcome a s44 objection raised during examination of its application for trademark registration of ASUS Vivobaby (Stylised) filed on 29 June 2016 for various goods in class 9 particularly in the nature of wearable technology.

The Examiner initially raised an objection based on a prior registration for VIVO (Stylised) covering telephones and smartphones.

The delegate agreed with the applicant that the applied for ASUS Vivobaby mark was not deceptively similar to the registered VIVO mark.

 SIGFOX (Societe Anonyme) v Macquarie Telecom Pty Ltd [2020] ATMO 183 (30 November 2020)

Unsuccessful opposition by SIGFOX to trademark registration of SIGBOX filed on 18 August 2015 for various computer related goods and services in classes 9 and 42.

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

Under s44, the opponent relied on its prior trademark registration for SIGFOX covering relevant goods and services in classes 9 and 38. However, the delegate did not consider SIGBOX to be deceptively similar to SIGFOX.

Given this finding, the s58 ownership ground necessarily failed as well.

The s60 and s42(b) grounds failed because the opponent’s evidence did not establish the requisite Australian reputation of its SIGFOX mark.

The s62A bad faith ground merely asserted prior knowledge by the applicant of the opponent’s SIGFOX mark and there was insufficient evidence to establish bad faith.