Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – October 2020

McPherson’s Consumer Products Pty Limited v Perfectscents Hand Made Soaps Pty Ltd [2020] ATMO 160 (6 October 2020)

Successful opposition by McPherson’s to trademark registration of SPIRITUAL ALCHEMY filed on 14 November 2017 for various beauty and personal care products in class 3.

The opponent prevailed under the s44 ground by relying on its prior registrations for ALCHEMY covering similar class 3 goods. The delegate considered SPIRITUAL ALCHEMY to be deceptively similar to ALCHEMY and the applicant’s use was insufficient to apply the honest concurrent use provision.

Sharon Booker v Claire Solomon [2020] ATMO 161 (6 October 2020)

Unsuccessful opposition by Booker to trademark registration of Automation Maven filed on 20 June 2018 for a broad range of class 35 services.

The opponent relied on the s60 reputation ground of opposition but failed to establish it.

The material relied upon by the opponent was not filed in the approved declaratory form and could not be considered as evidence. Hence the opponent could not satisfy its onus.

Evergreen Television Pty Ltd v Are Media Pty Ltd [2020] ATMO 162 (6 October 2020)

Unsuccessful oppositions by Evergreen television to trademark registration of DISCOVER DOWNUNDER in word and logo form filed on 16 October 2009 for various goods in class 9.

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

The matter was delayed pending the outcome of Federal Court proceedings involving the opponent and the DISCOVER DOWNUNDER mark. The appeal judgement is reported at https://www.selfmark.com.au/trademark-lawyer-sydney-full-federal-court-discover-downunder-appeal/ with the Full Federal Court refusing registration of the DISCOVER DOWNUNDER mark for production of television programs in class 41 on the ground that Evergreen did not have the requisite intention to use this mark for such services, but merely for the name of a television program.

Neither party filed evidence or submissions.

The s44 ground necessarily failed because the prior application for DISCOVER DOWNUNDER in class 41 relied upon by the opponent was refused registration.

The s58A ground was inapplicable. Although the opposed applications were originally accepted under s44(4), the fact that the opponent’s DISCOVER DOWNUNDER application was subsequently refused, rendered the application of s44(4) void ab initio.

The s58 and s62A grounds could not be established because there was no supporting evidence.

JOMOO GROUP CO LTD v Nature Wine (Aust) Pty Ltd [2020] ATMO 163 (13 October 2020)

Unsuccessful opposition by JOMOO to trademark registration of JOMOO (Stylised) filed on 4 December 2017 for various alcoholic beverages in class 33.

The opponent relied on the s44 ground of opposition but failed to establish it.

Neither party filed evidence or submissions.

The opponent referenced its prior registrations containing JOMOO but they covered different goods and services. Hence, the s44 ground necessarily failed.

Urban Clean IP Pty Ltd v Leviathan Consolidated Pty Ltd [2020] ATMO 164 (20 October 2020)

Unsuccessful opposition by Urban Clean to trademark registration of a composite mark containing URBAN CLEANERS filed on 16 October 2018 for various cleaning services in class 37.

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

The opponent holds the intellectual property for the Urban Clean franchise operated by a related entity, Urban Clean 1 Pty Ltd. The opponent owns a prior registration for a composite mark containing UrbanClean in classes 35 and 37, as well as a prior registration for URBANCLEAN in class 35. It asserted use of these trade marks from 2008.

Under s44, the opponent could only rely on its composite mark which covered similar class 37 services. The delegate considered the class 35 services covered by the URBANCLEAN word mark were not similar to the applied for class 37 cleaning services.

The respective composite marks are shown below:

The delegate found the applied for mark was not deceptively similar to the opponent’s registered mark, particularly as the words ‘urban clean’ are descriptive of cleaning services provided in urban areas.

The s58 A ground was inapplicable because the applied for mark was not accepted under s44(4).

The s60 ground also failed because the opponent’s evidence was insufficient to establish a requisite Australian reputation.

Valvoline Licensing and Intellectual Property LLC v ADYJOHNS Pty Ltd [2020] ATMO 165 (21 October 2020)

Successful opposition by Valvoline to trademark registration of Valvotech Logo shown below filed on 20 September 2017 for carious goods in class 4 including oils and lubricants.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its VALVOLINE mark.

West End Drinks Limited v Pernod Ricard [2020] ATMO 166 (22 October 2020)

Unsuccessful opposition by Pernod Ricard to trademark registration of The King of Soho Logo shown below filed on 14 May 2018 for alcoholic beverages in class 33.

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

Essentially, the opponent relied on prior use and registration of its SOHO mark.

Under the s60 ground, the delegate was not satisfied the opponent’s SOHO mark had acquired a relevant Australian reputation in the broader market of persons over the age of 18 years.

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 and/or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

Under s44, the delegate did not consider the applied for mark to be deceptively similar to the opponent’s SOHO mark.

Team Building Holdings Pty Ltd v Noosa Brewing Co Pty Ltd [2020] ATMO 167 (26 October 2020)

Unsuccessful opposition by Team Building to trademark registration of NOOSA BREWING CO Logo shown below filed on 1 November 2017 for a broad range of goods and services in classes 25, 32, 35, 40 and 43.

The opponent relied on grounds of opposition under ss 41, 42(b), 44, 58, 58A, 60 and 62A but failed to establish any ground.

The s41 ground failed because the applied for mark was a complex composite mark which, when considered in its entirety, was sufficiently distinctive.

The opponent primarily relied on its prior registrations for trade marks containing NOOSA BEER CO/COMPANY but the delegate considered the applied for mark was not substantially identical with or deceptively similar to any of them, so the s44 and s58A ground failed.

The s58 ground failed because the delegate was not satisfied the opponent had demonstrated prior use of a substantially identical mark.

The s60 ground failed because the delegate was not satisfied any of the opponent’s marks had acquired a relevant 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 and/or constitute passing off. However, given the delegate’s finding under s60, the s42(b) ground also failed.

There was no cogent evidence to substantiate bad faith by the applicant, so the s 62A ground also failed.

Hachette Filipacchi Presse v Helen Huynh and Elle Derm Australia [2020] ATMO 168 (28 October 2020)

Successful opposition by Hachette Filipacchi to registration of two trade marks containing or consisting of “elle derm” filed on 25 June 2018 and 4 July 2018 for various goods in classes 3 and 5.

The opponent prevailed under the s44 ground by relying on its prior registration for ELLE covering all class 3 goods.

Holdings of IP Pty Ltd AFT Intelligent Assets Trust v Joseph Buttita [2020] ATMO 169 (30 October 2020)

Unsuccessful opposition by Holdings of IP to trademark registration of PRIMAL JOE COFFEE CO filed on 6 November 2017 for café and coffee shop services in class 43.

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

The opponent primarily relied on prior use and registration of the MONGREL JOE trade mark for coffee, but the delegate considered the respective marks to be sufficiently different and confusion was unlikely. The opponent’s evidence also failed to establish requisite Australian reputation, particularly having regard to the broad nature of the coffee market.

Unilever Plc [2020] ATMO 170 (30 October 2020)

The applicant was able to overcome an objection to registration of its application for registration of the composite mark shown below filed on 8 July 2019 for various goods in class 3.

The Examination section had raised a s44 objection based on a prior registration for the mark shown below:

The delegate agreed with the applicant that the respective marks were not deceptively similar.