Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – October 2019

Darwin Funeral Services Pty Ltd [2019] ATMO 142 (1 October 2019)

An application for trademark registration of DARWIN FUNERAL SERVICES filed on 28 September 2017 for burial (funeral) services in class 45 was refused for lack of distinctiveness.

The delegate considered the applied for mark was not to any extent inherently adapted to distinguish the claimed services.

The applicant relied on use of the applied for mark in the Northern Territory since 1963. Although various documents relied upon showed use of the words DARWIN FUNERAL SERVICES with graphic devices, the delegate was prepared to accept this as use of the applied for word mark. However, even then, such use was insufficient to show the applied for mark had become factually distinctive as at the filing date.

The delegate observed that “a trade mark such as DARWIN FUNERAL SERVICES for ‘Burial (funeral) services’ while perhaps not unregistrable regardless of the amount of use, comes very close to that standard and would require a very considerable amount of evidence that the Trade Mark has, in the market, established a new and secondary meaning different from its descriptive meaning.”

 

The a2 Milk Company Limited v Open Country Dairy Limited [2019] ATMO 143 (1 October 2019)

Unsuccessful opposition by The a2 Milk Company to trademark registration of OPEN COUNTRY A2 filed on 28 August 2017 for various dietetic foods in class 5, dairy products in class 30 as well as wholesaling and retailing of these goods in class 35.

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

The opponent relied on prior registrations for trade marks with A2 rendered in a stylised form and/or containing A2 in combination with other matter, as well as the reputation derived from Australian  use, since 2004, of a2 milk branded products. However, the evidence disclosed that “A2” refers to a characteristic of milk, namely the presence of A2 beta-casein protein. Given the descriptive nature of this shared element , the delegate was not satisfied as to the likelihood of confusion.

 

Slogger P L ATF S&S Family Trust and Whack Sports Melbourne P L v Whack Sports Brisbane P L [2019] ATMO 155 (1 October 2019)

Unsuccessful opposition by Slogger and Whack Melbourne to trademark registration of WHACK Sports Logo shown below with a divisional priority date of 2 March 2017 for various apparel in class 25 and sporting equipment in class 28.

Trademark-Registration-Whack-Sports-Logo

The opponents relied on grounds under ss 58 and 62A, but failed to establish either ground.

The Whack Sports stores in Melbourne and Brisbane were run by members of an extended family, but there was a falling out resulting in a dispute as to ownership of trade mark rights. The opponents contended the trade mark was created by the collective effort of all the parties and all IP rights were to be held by the family trust, but the evidence was insufficient to disrupt the applicant’s claim to ownership and so the s58 ground of opposition failed.

The s62A bad faith ground also failed as there was insufficient cogent evidence to support this.

 

Energy Beverages LLC v Lava Coffee International Pty Ltd [2019] ATMO 144 (3 October 2019)

Unsuccessful opposition by Energy Beverages to trademark registration of the Graphic Device shown below filed on 14 August 2017 for coffee related goods and services in classes 30, 35 and 43.

Trademark-Registration-Flame-Device

 

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

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

The opponent relied on reputation derived from use of various trade marks containing BURN with a Flame Device for energy drinks, although these trade marks had not actually been used in Australia. It also had Australian trademark registrations in class 32 for the following Flame Device marks:

Trademark-Registration-Flame-Device-Energy 1        Trademark-Registration-Flame-Device-Monster2

Rights to the BURN brand of energy drinks were transferred in 2015 from The Coca Cola Company to the opponent’s parent company, Monster Beverage Corporation.

The s44 ground failed because the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to either of the opponent’s registered marks. The delegate considered the applied for mark does not connote a realistic flame and can be view as a hook, whereas the opponent’s marks are more realistic flame devices. There was no consideration as to whether the applied for goods or services were similar or closely related to the class 32 goods covered by the opponent’s registered marks.

Under s60, the delegate was satisfied that the opponent’s Flame Device marks had acquired a relevant spillover reputation in Australia in connection with energy drinks through marketing activities such as the sponsorship of international sporting events, athletes and artists. However, given the differences in the respective marks, there is unlikely to be a real risk 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 contrary to the Australian Consumer Law and/or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

 

Factory X v Harvey Norman Retailing Pty Ltd [2019] ATMO 145 (8 October 2019)

Unsuccessful oppositions by Factory X to trademark registration of BLACK TAG FRIDAY in plain word and stylised versions filed on 25 September 2017 for various retail and business services in class 35.

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

The opponent relied on use and registration, from 2007, of its BLACK FRIDAY trade mark for clothing as well as wholesaling and retailing services. These goods were sold through various retailers and from the opponent’s online store with black-friday.com.au as its domain name.

Under s44, the respective services were clearly similar, so the delegate had to consider whether the applied for BLACK TAG FRIDAY marks were substantially identical with or deceptively to the opponent’s BLACK FRIDAY registered mark and found in the negative. Although each of the trade marks contain the words ‘Black’ and ‘Friday’, they convey different ideas and concepts. The addition and positioning of the word ‘Tag’ in the applied for marks results in a substantial difference in meaning to that of the opponent’s registered mark.

The s60 ground failed because the delegate was not satisfied any of the opponent’s BLACK FRIDAY marks had acquired the requisite degree of Australian reputation.

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

 

ASUSTEK COMPUTER INCORPORATION [2019] ATMO 146 (9 October 2019)

The applicant was successful in overcoming an objection raised during examination of its application for trademark registration of ROG STRIX filed on 27 November 2017 for various computer goods.

The Examiner had initially raised a s44 objection based on a prior trademark registration for StrixOS covering software in class 9. However, the delegate agreed with the applicant that the respective trade marks were not substantially identical or deceptively similar.

 

British American Tobacco (Brands) Limited v Philip Morris Products S.A. [2019] ATMO 147 (9 October 2019)

Unsuccessful opposition by BAT to trademark registration of TETRAPOD filed on 12 January 2017 for various goods and services, particularly relating to electronic cigarettes, in classes 9, 11, 17, 19, 20, 24, 34 and 35.

The opponent relied on grounds under ss 44 and 59, but failed to establish either ground.

Under s44, the opponent relied on its prior registrations for TASTE PODS and NANOPODS in class 34. However, the delegate considered TETRAPOD to be sufficiently conceptually, aurally, and visually different from the opponent’s marks and a relevant person of ordinary intelligence would not be likely to be confused or deceived, even allowing for an imperfect recollection.

Under the s59 lack of intention to use ground of opposition, the opponent argued that the trademark application covered a very broad range of goods in classes not directly related to electronic cigarettes and that internet searches failed to disclose any use of the TETRAPOD mark. However, this was insufficient to shift the onus on to the applicant to prove its intention beyond the act of filing the trademark application.

 

Caterpillar Inc v FCA US LLC [2019] ATMO 148 (11 October 2019)

Unsuccessful opposition by Caterpillar to trademark registration of HELLCAT filed on 31 October 2017 and 20 December 2017 for motor vehicles and engines in class 12.

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

Reliance was placed on use and registration of the opponent’s CAT ( word and stylised versions) and CAT- derivative marks, as well as brand extensions into fields other than machinery and vehicles.

The applicant was primarily interest in high performance sports cars and indicated the HELLCAT mark was used in conjunctions with its other well known brands such as DODGE and CHALLENGER.

Under s44 the comparison is between the respective marks attributing a notional use to each and hence the applicant’s statements as to the actual manner of use of the HELLCAT mark were irrelevant. Clearly, there was an overlap in the respective goods. Nonetheless, the delegate did not consider HELLCAT to be deceptively similar to any of the opponent’s registered CAT marks in the context of motor vehicles which are generally expensive items purchased after careful thought and consideration.

Under s60 the delegate acknowledged the opponent’s extensive reputation in the CAT word and stylised marks including, among other things, in respect of motor vehicles, their engines and parts. However, this worked against the opponent and the delegate commented that the more likely scenario is that the strength of the opponent’s reputation in its CAT marks will cause the consumer to appreciate the difference between them and the applied for HELLCAT mark.

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

 

Major League Baseball Properties Inc. v Philip Morris Brands Sarl. [2019] ATMO 149 (16 October 2019)

Unsuccessful opposition by MLBP to trademark registration of MLB filed on 25 November 2015 for tobacco and electronic cigarette products in classes 9 and 34, as well as wholesaling and retailing of those products in class 35.

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

Essentially, the opponent contended that, due to the reputation of the Major League Baseball business and its MLB trade mark, use of the applied for MLB mark would be likely to deceive or cause confusion (s60) and/or would constitute passing off and be likely to mislead or deceive in contravention of the Australian Consumer Law (s42(b)).

After considering the evidence, the delegate found that at the priority date the opponent’s MLB trade mark had a modest reputation in Australia in respect of the game of professional baseball played by MLB Clubs. That reputation was limited to clothing and sporting goods for baseball, or services in the nature of the promotion and organisation of the sport of baseball. It did not extend to smokers’ articles.

There is also Australian legislation prohibiting advertising of tobacco products at sporting events.

Given this, the delegate concluded that there is almost no likelihood of confusion or deception were the applied for MLB mark used on the goods and services for which it is sought to be registered and so the s60 ground failed.

Given this finding, the s42(b) ground of opposition also failed as it requires a higher threshold of proof than s60.

 

Energy Beverages LLC v Cantarella Bros Pty Ltd [2019] ATMO 150 (18 October 2019)

Unsuccessful opposition by Energy Beverages to trademark registration of MOTHERSKY filed on 11 January 2017 for coffee and chocolate in class 30 and coffee roasting and grinding in class 40.

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

Essentially, the opponent relied on use and registration of its MOTHER trade marks. Rights to these trade marks were assigned on 12 June 2015 from The Coco-Cola Company to the opponent. The MOTHER brand has been used in Australia since 2007 in relation to energy drinks.

Under s44, the opponent referred to its prior MOTHER trademark registrations in classes 32 and 33, as well as registrations for MOTHERLAND in class 32 and MOTHER LOADED ICED COFFEE in class 30. However, the delegate di not consider the applied for MOTHERSKY mark to be deceptively similar to any of these registered marks.

Under s60, the delegate was satisfied the evidence demonstrated the opponent’s MOTHER trade marks had acquired a substantial Australian reputation for energy drinks. However, this was a case where the opponent was a victim of its own success, particularly as the MOTHER mark was always rendered in gothic black and white script and used only for energy drinks. Consequently, the delegate was not satisfied that use of the MOTHERSKY trade mark would be likely to deceive or cause confusion.

 

The Dow Chemical Company v Foilboard Australia Pty Ltd [2019] ATMO 151 (21 October 2019)

Unsuccessful opposition by Dow Chemical to trademark registration of SLABMATE filed on 14 July 2017 for insulating materials in classes 17 and 19.

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

Under the s44 ground, the opponent relied on its family of registered – MATE suffix marks, namely registrations for ROOFMATE, FLOORMATE, DECKMATE, CLADMATE and WEATHERMATE. However, the delegate did not consider SLABMATE to be deceptively similar to any of the opponent’s marks, particularly as MATE is a very common element in trade marks.

Under s60, the opponent contended that its various -MATE suffix marks had acquired an Australian reputation derived from their use for insulation products. However, the evidence relied upon contained gaps and, at best, indicated a very modest reputation in the ROOFMATE mark. Nonetheless, given the differences in the respective marks, the delegate found there is no 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 contrary to the Australian Consumer Law and/or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

There was no evidence to support the s62A bad faith ground, so it also failed.

 

Starwood Hotels & Resorts Worldwide, LLC v AACo Innovation Pty Ltd [2019] ATMO 152 (21 October 2019)

Unsuccessful oppositions by Starwood to trademark registration of two variants of a composite mark comprising a stylised W Device with the word Wylarah filed on 22 June 2016 for various goods and services in classes 8, 18, 21, 24, 25, 29, 35 and 43.

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

Under s44, the opponent relied on prior registrations for its various trade marks consisting of a stylised W Device (by itself or with the word HOTELS) and THE W which covered services similar to at least the claimed class 43 services. However, the delegate did  not consider the applied for marks to be deceptively similar to any of these registered marks.

Under s60, the opponent relied on the reputation of its W marks used with its W Hotels brand. In Australia, there was a hotel in Sydney from 2000 to 2006 and one in Brisbane which opened in June 2018. The delegate was satisfied the opponent has a reputation in its W marks overseas, but expressed the view that it is debatable how much of this reputation transfers to Australia. In any event, the differences in the respective marks were too great for there to be a likelihood of confusion.

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