Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – November 2021

Publishing By Chelle Pty Ltd v Ausbiz TV Pty Ltd [2021] ATMO 130 (1 November 2021)

Unsuccessful opposition by Publishing By Chelle to trademark registration of AUSBIZ filed on 7 August 2019 for various goods and services in classes 9, 38 and 41.

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

The opponent asserted use of AUSBIZ since November 2017 in relation to print and digital magazine publication and multimedia production for the Australian business sector.

The applicant is a digital media company, providing live and on-demand news, expert analysis and commentary primarily focused on business, finance and investment matters.

The delegate characterised the opponent’s use of the AUSBIZ mark as being the title of an inflight business magazine with the provision of advertising services. These were not the same kind of thing as the goods and services covered by the applied for mark; so the s58 ownership ground failed.

The s60 ground failed because the evidence did not establish the opponent AUSBIZ mark had acquired a relevant Australian reputation.

The opponent also relied on the reputation of its AUSBIZ trade mark 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.

AMS GROUP 1 PTY LIMITED and AMS GROUP 2 PTY LIMITED v Krost Business Furniture Centre Pty Ltd [2021] ATMO 131 (1 November 2021)

Unsuccessful opposition by AMS Group to trademark registration of DART filed on 23 July 2018 for various tables in class 20.

Acceptance was achieved with a s44(4) endorsement indicating the application of the prior continuous provision.

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

The opponents were self – represented and did not file any evidence in support. As such, only the s44 ground could be properly considered and the Statement of Grounds and Particulars did include reference to their prior DART trademark registration covering furniture in class 20 which dated from 8 December 2015. However, the delegate was satisfied the applicant’s evidence justified continuous use from late 2012 and so the application of s44(4) was appropriate.

Ampac Pty Ltd v Boss Fire & Safety Pty Ltd [2021] ATMO 132 (3 November 2021)

Successful opposition by Ampac to an application for removal of its registration for the trade mark FireFinder alleging no good faith use in the relevant 3 years period ending 3 February 2020.

The registration dates from 24 March 1998 and covers fire detection and alarm products in class 9. The registration included parts and accessories for these products.

The delegate agreed that, in the context of the relevant goods, the claim to “accessories” included software. This was significant because the opponent provided software for the operation and configuration of its control panels and the removal applicant (or its related company) was interested in a similar mark for software with different applications.

The delegate was satisfied that the evidence demonstrates use of the registered mark in the relevant period in relation to “Instrumentation and fire indicator panels for fire alarms, emergency warning devices and evacuation systems; inter-communication equipment therefor. This use constituted a sufficient subset of “fire detection equipment” to justify retaining that claim without restriction.

The issue requiring resolution was whether the claims for parts and accessories should be subject to some form of restriction and the delegate considered that any restriction would not serve any practical purpose, particularly as the accessories (including software and some hardware items) were qualified by reference to the primary products. The delegate considered that, in this instance, use on a subset of parts and accessories for the primary products is sufficient to constitute use for the entirety of the broader claim for parts and accessories generally.

Prime Property Group SA Pty Ltd v Australian Central Credit Union Limited [2021] ATMO 133 (5 November 2021)

Unsuccessful oppositions by Prime Property to trademark registration of People’s Choice (word and logo) filed on 7 June 2018 for various financial services in class 36.

The opponent relied on grounds of opposition under ss 44 and 60 but failed to establish either ground.

Under s44, the opponent relied on its prior registration for PEOPLE’S CHOICE Logo covering various real estate related services in classes 35, 36, 37 and 45. The respective marks were deceptively similar, but the delegate did not consider the applicant’s services to be similar to those covered by the opponent’s registration. Despite some peripheral overlaps in some aspects of the respective services, the delegate was not satisfied that they have a fundamentally similar nature and purpose, or that consumers would expect that financial related services and real estate related services generally would originate from the same trade source. The opponent’s registration also covered advertising services but, again, the delegate considered there was no obvious similarity in nature, purpose, or trade channels with the applicant’s services.

Under s60, the opponent relied on use since May 2010 of its PEOPLE’S CHOICE Logo mark for real estate, property management and business services, but the delegate found this mark had been used only for property management services and had not acquired a requisite reputation.

Strathfield Independents v Geoffrey Markwell [2021] ATMO 134 (5 November 2021)

Unsuccessful opposition by Strathfield Independents to trademark registration of STRATHFIELD INDEPENDENTS & Clocktower Device filed on 8 July 2019 for providing information regarding political issues in class 45.

The opponent relied on grounds of opposition under ss 41, 43, 44, 58, 58A, 59, 60 and 62A, but failed to establish any ground.

Essentially, this concerned a dispute arising from the 2017 local government elections and the campaign to save Strathfield Council from amalgamation.

The delegate considered the applied for mark was sufficiently distinctive under s41 and the applicant’s services were not similar to prior registered marks relied upon by the opponent under s44. Consequently, the s58A ground also failed.

The s43 ground failed because the delegate found there was no connotation in the applied for mark likely to deceive or cause confusion. At the filing date, there was no exclusivity in use of STRATHFIELD INDEPENDENTS.

The s58 ownership ground failed because the marks relied upon by the opponent were not substantially identical with the applied for mark.

The s60 ground failed because the delegate was not satisfied that any of the marks relied upon by the opponent had acquired a requisite Australian reputation.

The evidence was insufficient to displace the applicant’s intention to use the applied for mark, so the s59 ground failed.

Finally, the delegate was not satisfied on the evidence that the applicant acted in an unscrupulous or underhand manner, or that persons observing acceptable commercial standards would consider his decision to apply for registration of the Trade Mark was in bad faith; so the s62A ground also failed.

Suzannestaz Management Pty Ltd v September 7 Pty Ltd [2021] ATMO 135 (9 November 2021)

Unsuccessful opposition by Suzannestaz to trademark registration of ACCESSIBLE ACCOMMODATION Logo filed on 21 August 2019 for various travel information related services in class 39 and accommodation finding services in class 43.

The opponent relied on grounds of opposition under ss 43, 44 and 60, but failed to establish any ground.

Under ss 44 and 60 the opponent relied on its prior registration and use of its Suzanne Stays Logo mark which contained a stylised graphic of a person in a wheelchair, but the marks were otherwise very different such that confusion was unlikely.

The was no evidence to support the applied for mark contains any connotation that is likely to deceive or cause confusion; so the s43 ground also failed.

Vitaco Health IP Pty Ltd v Chun Ding [2021] ATMO 136 (9 November 2021)

Successful opposition by Vitaco Health to trademark registration of VITOCA filed on 16 December 2018 for various dietary supplements in class 5.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its VITACO mark for supplements and sports nutrition products.

Sprint Horticulture Pty Ltd v Lucas Finance Pty Ltd [2021] ATMO 137 (15 November 2021)

Partly successful oppositions by Sprint Horticulture to applications for removal of its registrations for the trade mark Hello Logo alleging no good faith use in the relevant 3 years period ending 8 September 2019.

The registrations date from March and June 2014 and covered various agricultural and horticultural products in class 31 and related retailing, wholesaling and distributing of those products in class 35.

There was no use of the mark in the form as registered. There was use of the HELLO word mark and use of HELLO with additional word and/or device elements, but there were material differences between these marks and the registered mark. The delegate did not consider they could be relied upon to support use of the registered mark.

Nonetheless, the delegate was prepared to exercise discretion and allow the class 31 registration to remain for flowering plants and similar goods, but directed the class 35 registration be removed in its entirety.

Stoddart Technology Pty Ltd v Stoddart Electrical Pty Ltd [2021] ATMO 138 (16 November 2021)

Unsuccessful opposition by Stoddart Technology to trademark registration of S Logo filed on 29 October 2019 for installation, maintenance, modification and repair of electrical products in class 37.

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

The opponent’s prior registered marks contained the word STODDART with a different graphic resembling the letter S. The delegate considered the applied for mark was not deceptively similar.

The opponent also relied on a prior registered mark owned by another party covering non-metallic electrical and instrumentation enclosures in class 9, but the delegate considered the applicant’s services were not closely related to these goods; so the s44 ground failed.

The delegate was satisfied the opponent’s STODDART Logo mark had acquired a significant reputation for the supply and installation of various building materials, but there was not a likelihood of confusion due to the differences with the applied for mark; so the s60 ground failed.

The opponent also relied on the reputation of its STODDART Logo mark under s42(b) to allege that use of the applied for mark would be contrary to the Australian Consumer Law f. However, given the delegate’s finding under s60, the s42(b) ground also failed. The opponent also sought to introduce the applicant’s use of the applied for mark with the words STODDART ELECTRICAL, but the delegate considered that was misleading and incorrect because the applied for mark did not include those words.

Active Skin Pty Ltd v Yey Pty Ltd [2021] ATMO 139 (17 November 2021)

Partly successful opposition by Active Skin to an application for removal of its registration for the trade mark ACTIVE SKIN Logo alleging no good faith use in the relevant 3 years period ending 6 January 2020.

The registration dates from 5 August 2006 and covered cosmetics in class 3.

As an initial matter, the delegate considered bath salts, face and hand masks to be cosmetic products.

The evidence disclosed use of the registered mark for bath salts and bath bombs during the relevant period.

The delegate did not consider use of the word mark Active Skin and other variants of Active Skin in combination with other graphic elements in relation to a broader range of cosmetics to be use of the registered Logo mark.

Despite the opponent’s use of these other Active Skin marks, the delegate was not prepared to exercise discretion and directed the registered mark remain only for bath salts and bath bombs.

Kevin Francis Darley v Godolphin Management Ltd [2021] ATMO 140 (17 November 2021)

Unsuccessful opposition by Kevin Darley to an application for removal of his registration for the trade mark DARLEY alleging no good faith use in the relevant 3 years period ending 10 March 2019.

The registration dates from 27 February 2013 and covered horse training and racing services in class 41.

Although the opponent had previously been active in the horse racing industry, the evidence relied upon was insufficient to satisfy the delegate as to use of DARLEY as a trade mark for the registered services during the relevant period.

The opponent referred to drought and personal illness which disrupted his business, but the delegate did not consider these circumstances to be an obstacle to use of the registered mark.

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

Australian Business Growth Fund Pty Ltd [2021] ATMO 141 (23 November 2021)

The applicant was able to partly overcome a distinctiveness objection raised during examination of its application for trademark registration of AUSTRALIAN BUSINESS GROWTH FUND filed on 19 November 2019 for various goods and services in classes 9, 35 and 36.

The relevant fund was established in November 2019 and involves a collaboration between the Australian government and private sector to create a fund to provide longer term equity and funding to small and medium sized enterprises.

The delegate considered the words in the applied for mark have an ordinary meaning as indicating a fund which manages money for the purpose of Australian business growth. These words were not to any extent inherently adapted to distinguish the claimed services in class 36, the advertising  and marketing services in class 35, and the downloadable and audio-visual content in class 9. However, these words had some limited inherent adaption to distinguish the remaining goods and services, but the evidence of use relied upon was insufficient. Much of the evidence failed to show trade mark use of the words.

The delegate considered the applied for mark was only inherently adapted to distinguish certain computer apparatus, hardware and devices in class 9 as the words AUSTRALIAN BUSINESS GROWTH FUND do not describe the subject matter, quality or some other characteristic of such goods. Hence, the application could proceed for these limited goods.

Dajin Pei and World United Group Pty Ltd v Comite International Olympique [2021] ATMO 142 (23 November 2021)

Unsuccessful opposition by Dajin Pei and World United Group to an application for removal of their registration for the trade mark WorldEdu Logo alleging no good faith use in the relevant 3 years period ending 12 November 2019.

The registration dates from 20 May 2003 and covered a broad range of services in class 41.

The evidence did not satisfy the delegate that the registered mark had been used during the relevant period and there were no obstacles to use. Much of the evidence was undated or lacked probative value. The mere registration of a corresponding business name and domain name was not relevant to establishing trade mark use.

The opponent did not make any submissions directed to the exercise of discretion and the delegate directed the registered mark to be removed in its entirety.

PTM Guard SIA [2021] ATMO 143 (24 November 2021)

The applicant was unable to overcome a distinctiveness objection raised during examination of its application for trademark registration of the shape shown below filed on 10 September 2018 for various acupuncture goods in class 10 as well as other goods and services in classes 20, 27 and 35.

The delegate noted the ordinary signification of the applied for mark is that of a lotus flower or lotus flower leaves which is particularly familiar in the fields of Chinese and Indian health and relaxation practices such as acupuncture and yoga. It therefore has an association with the relevant goods and services.

The applicant produces a variety of products including mats, cushions and pillows on which lotus shaped elements are affixed and provide an acupuncture or massage effect. Consequently, the delegate was satisfied the applied for mark has functional features and there was evidence of use by others of similar lotus shapes for similar goods.

The delegate considered the shape also has some aesthetic qualities and hence has a slight degree of inherent adaptation to distinguish and so s41(4) was applicable.

The applicant relied on Australian use of its lotus shape since 2014, but the delegate was not satisfied the evidence supported use of this shape as a trade mark. Rather the applicant’s Pranamat word mark functions as the primary indicator of origin.

Hence the delegate refused the application, but it was subsequently accepted for amended goods, namely “acupuncture needles” in class 10.

Cantarella Bros Pty Ltd [2021] ATMO 144 (25 November 2021)

The applicant was unable to overcome a distinctiveness objection raised during examination of its application for trademark registration of Victoria Coffee Logo shown below filed on 17 September 2018 for various coffee, tea and chocolate products as well as biscuits and cakes in class 30.

The delegate considered the applied for composite mark signifies coffee related goods that originate from Victoria, Australia and was satisfied that other traders would need to use a trade mark so nearly resembling it in relation to similar goods. The delegate considered the stylised font and rectangle device are not particularly distinctive elements and do not overcome the pure descriptiveness and prominence of the word elements. Hence, s41(4) was applicable.

The applicant relied on use of its VITTORIA marks including that mark rendered in similar script form with the rectangle device, but the delegate was not satisfied this rendered the applied for mark capable of distinguishing the relevant goods.

Mars Australia Pty Ltd [2021] ATMO 145 (26 November 2021)

The applicant was unable to overcome a distinctiveness objection raised during examination of its application for trademark registration of a Cat Device shown below filed on 19 June 2019 for animal foodstuffs and other products in class 31.

The applied for mark is a photographic depiction of  a Russian Blue breed of cat lying on its side.

The delegate considered evidence of various depictions of cats used by other traders for cat foodstuffs and cat litter products, but noted the number of variations of cats used in the trade does not mitigate the ordinary signification conveyed by a photographic image of a cat in respect of goods for cats.

The applied for mark needed to be considered under s41(4) as having some limited inherent adaptation to distinguish, but it was necessary to have regard to evidence of use or other circumstances.

The applicant relied on use of this particular depiction of a cat used on pack graphics for its DINE products since 2015/2016, but the evidence filed was insufficient to satisfy the delegate that the applied for mark is capable of distinguishing the relevant goods.

Basic Trademark SrL v Donna Kittle [2021] ATMO 146 (26 November 2021)

Successful oppositions by Basic Trademark to registration of the word mark CONTROL filed on 28 April 2019 and 10 June 2019 for a broad range of apparel in class 25 as well as retail and wholesale services in class 35.

The opponent prevailed under the s44 ground by relying on its prior registration for the trade mark KONTROLL covering goods in 25 which were similar to the applicant’s goods and closely related to the applicant’s services.

The delegate considered CONTROL to be deceptively similar to KONTROLL. The visual differences did not outweigh the aural identity of the respective marks.

Sinch Software Pty Ltd v Sinch AB [2021] ATMO 147 (29 November 2021)

Unsuccessful opposition by Sinch Software to an application for partial removal of its registration for the trade mark Sinch (Series) alleging no good faith use in the relevant 3 years period ending 11 October 2019.

The registration dates from 2 September 1993 and covered computer software in class 9. The removal application was confined to software other than for use in relation to litigation support and the legal services industry.

The delegate found no use of the registered mark for any other software during the relevant period. At best, the opponent’s evidence pointed to the provision of computer software services and research services.

The delegate was not prepared to exercise discretion and directed the trade mark be removed from the Register for the goods claimed in the removal application.