Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – September 2019

Shenzhen Fernfortune International Wines Co Limited v Bilyara Vineyards Pty Ltd [2019] ATMO 131 (2 September 2019)

Unsuccessful oppposition by Shenzhen Fernfortune to trademark registration of FEN FU filed on 31 October 2017 for wine in class 33

The opponent relied on grounds of opposition under ss 60 and 62A, but failed to establish either ground.

Under s60, the opponent relied on reputation derived from use of its FERNFORTUNE mark and a Chinese Character Mark, but the evidence failed to establish a sufficient Australian reputation.

Under the s62A bad faith ground, the opponent relied on its earlier filed application for its Chinese Character mark (which is apparently transliterated as FEN FU), but that application was opposed by the applicant and lapsed. The Opponent also had a Chinese trade mark registration for this mark. However, the evidence was insufficient to establish the serious allegation of bad faith.

 

The BBQ Store Pty Ltd v B B Q Factory Pty Ltd [2019] ATMO 132 (2 September 2019)

Successful opposition by The BBQ Store to trademark registration of The BBQ store Logo shown below filed on 24 August 2015 for barbeques in class 11.

Trademark-Registration-The-BBQ-store-Logo

The opponent prevailed under the s58A ground.

This is the latest in a string of trademark oppositions between the parties.

The applicant had, following an unsuccessful opposition by the opponent relying on prior use of an allegedly similar mark, previously obtained trademark registration of the composite mark shown below filed on 5 November 2012 for barbeques in class 11. This composite mark contained the additional words “Outdoor Kitchen Appliances” and is referred to as the applicant’s earlier mark.

Trademark Registration The BBQ store Logo

The opponent subsequently obtained registration of its mark shown below filed on 20 January 2015 for various retail and wholesale services relating to barbecues by relying on prior continuous use. This is referred to as the opponent’s mark.

Trademarkk Registration The BBQ Store

The opponent then successfully opposed registration of a further application to register the applicant’s earlier mark filed on 13 February 2015 for various retail and wholesale services relating to barbecues. Essentially the opposition was upheld based on prior use of the opponent’s mark.

Underpinning these earlier oppositions were the findings that the applicant’s earlier mark and the opponent’s mark were deceptively similar, but not substantially identical and that the opponent’s mark had been used continuously from 2011 and before any claimed use of the applicant’s earlier mark from 2012.

In the current opposition, the delegate considered the applied for mark to be deceptively similar to the applicant’s mark. The applicant could, under s44(4), overcome the registration of the opponent’s mark dating from 20 January 2015 by relying on prior continuous use since 2012. However, the opponent could trump this under s58A by relying on use of its mark from before the applicant’s earliest use.

 

Mobile Services International Pty Ltd v Matthew Antony Lynn and Leather FX Pty Ltd [2019] ATMO 133 (2 September 2019)

Unsuccessful opposition by Mobile Services to trademark registration of LEATHER FX Logo shown below filed on 21 December 2016 for upholstery for vehicles in class 12

Trademark-Registration-Leather-FX-Logo

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

The opponent primarily relied on use and registration of its Leather Doctor trade mark in connection with the repair of leather and vinyl furnishings.

THE s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to any of the opponent’s Leather Doctor registered marks.

Under s60, the delegate was satisfied the opponent’s Leather Doctor mark had acquired a limited Australian reputation, but there was no real likelihood of confusion given the differences in the respective marks.

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

Finally, the s62A bad faith ground also failed for lack of evidence.

 

Discovery Holiday Parks Pty Ltd v Beston Technologies Pty Ltd [2019] ATMO 134 (9 September 2019)

Unsuccessful opposition by Discovery to an application for removal of its trademark registration for Beston Parks Group Logo, alleging non-use during the 3 years period ending on 12 November 2017.

The trademark registration dated from 7 March 2007 and covered various services in classes 35, 41 and 43.

The opponent had rebranded its business in 2008 and relied on alleged use of this mark on two web pages marketing holidays, but there was no evidence these pages had been accessed by anyone during the relevant period. The delegate considered these web pages were artefacts and did not support genuine commercial use and the opponent did not rely on discretion.

 

Vitalis Health & Home Care Pty Ltd v Vitalis Healthcare Pty Ltd [2019] ATMO 135 (10 September 2019)

Partly successful opposition by Vitalis Health & Home to trademark registration of VITALIS filed on 25 September 2017 for health and medical related services in class 44.

The opponent prevailed under the s58 ownership ground. It established use of the VITALIS mark in advertising of its medical services, medical advisory and consultancy services and home care services from May 2016 which was before the applicant’s first use on 29 June 2016. The services provided by the opponent were the same kind of thing as some, but not all, of the applicant’s services.

The delegate identified the relevant services covered by the applied for mark which were not caught under s58 and went on to consider the other grounds of opposition in the context of those services. However, the grounds under ss42(b) and 60 were not established for those remaining services. Nonetheless, the delegate considered it was inappropriate to allow the application to proceed for any services and rejected it in its entirety.

 

Solo Industries Pty Ltd [2019] ATMO 136 (16 September 2019)

The applicant was unable to overcome an examination objection that its application for trademark registration of the device mark shoen blow filed on 6 July 2017 for lawn edger blades lacked distinctiveness

Trademark-Registration-Cross-Blades-Device

The delegate considered the applied for mark was a mere illustration of blades in a manner which achieves a four-fold cutting action and was not to any extent inherently adapted to distinguish the applicant’s goods. The evidence relied upon was insufficient to overcome this objection. Indeed, the delegate considered a consumer will view the cross blades shown on packaging as a representation of the goods rather than as an indication of their commercial origin. It was, at best, a limping mark, dependent upon the primary ATOM mark for distinctiveness.

 

Fonterra Co-Operative Group Limited v Vitasoy International Singapore Pte. Ltd. [2019] ATMO 137 (17 September 2019)

Unsuccessful opposition by Fonterra to trade mark registration of GROWING MILK SINCE 1940 filed on 25 September 2017 for various plant based dairy substitute products in classes 29, 30 and 32.

The opponent relied on grounds under ss 42(b) and 43, but failed to establish either ground.

Essentially, the opponent’s objection was centred on the term “milk” in the applied for mark when used for soy, almond and other plant based dairy substitutes.

Under s43, the opponent relied on the definition of “milk” in the Australian and New Zealand Food Standard Code which refers to the normal mammary secretion of milking animals. This gives rise to a connotation that products offered under the applied for mark contain dairy milk and that use of the applied for mark for plant based dairy substitutes would be likely to deceive or cause confusion. However, the delegate agreed with the applicant that the applied for mark must be considered in its entirety and it is artificial to separate the word “milk” from the rest of the mark. Also, consumers are well aware that there are various plant based beverages which are often described as “milk”. Further, the reference to the word “growing” in the applied for mark leads the consumer away from dairy milk (which is not grown), whereas plant-based milk products are grown. Hence, it is unlikely for a consumer to consider the applied for mark refers to dairy milk.

The opponent relied on the same arguments in support of the s43 ground to contend that the applied for mark inherently suggests dairy milk and that use of it for plant based diary substitutes would be misleading or deceptive under the Australian Consumer Law. However, that ground also failed.

 

Segator Pty Ltd v FKS Australia Pty Ltd [2019] ATMO 126 (19 September 2019)

This concerned an opposition to trademark registration of PAGOTO GELATO & WAFFLE HOUSE Logo.

The applicant’s request for a 1 month extension to file its evidence in answer was refused and the delegate was not willing to exercise discretion to admit late filed evidence.

The delegate was not satisfied the applicant had acted promptly and diligently. Indeed, it had failed to account for steps taken in two of the allocated three months period for filing its evidence.

Further, the public interest is not served by permitting in late filed evidence where the applicant has not adequately demonstrated its probative value, nor offered cogent reasons for why the filing occurred after the deadline.

 

Meyndert Bornman and Nicole Cronin v SECA REPTILES & AQUARIUM PTY LTD [2019] ATMO 138 (19 September 2019)

Unsuccessful opposition by Bornman and Cronin to trade mark registration of the SECA REPTILES Logo shown below filed on 29 December 2016 for pet sales services in class 35 and animal care services in class 44.

Trademark-Registration-Seca-Reptiles-Logo

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

The 60 ground failed because the opponents’ evidence was insufficient to establish an Australian reputation in its unregistered mark such that use of the applied for mark would be likely to deceive or cause confusion.

Under s42(b) the opponents contended they had created the applied for mark before being employed by the applicant and hence were the copyright owners. However, the evidence was unclear as to when the employment relationship commenced and hence the opponents could not conclusively show they were the copyright owners.

The s62A bad faith ground also failed for lack of evidence.

 

Danielle Piat v JimmyRum Pty Ltd [2019] ATMO 139 (19 September 2019)

Unsuccessful opposition to trademark registration of JimmyRum filed on 26 September 2017 for rum in class 33.

The opposition proceeded only under the s60 reputation ground. The opponent belatedly retained legal representation and a request was made to amend the Statement of Grounds and Particulars to add additional grounds and evidence was filed out of time in support of those additional grounds. However, the request to add new grounds was refused and the late evidence was not considered.

The opponent and her husband, James Gorman, run a cocktail bar in Port Douglas which opened in June 2017. Mr Gorman was apparently also known as Jimmy Rum and the cocktail bar is called Jimmy Rum’s Mixing Lounge. However, the evidence relied upon was insufficient to establish the requisite degree of Australian reputation and so the s60 ground of opposition failed.

 

Energy Beverages LLC v Cantarella Bros Pty Limited [2019] ATMO 140 (24 September 2019)

Unsuccessful opposition by Energy Beverages to an application for removal of its trademark registration for MOTHER LOADED ICE COFFEE, alleging non-use during the 3 years period ending on 13 January 2018.

The trademark registration dated from 8 February 2011 and covered various goods in classes 29 and 30.

Rights to this trademark (and other MOTHER marks) were assigned on 12 June 2015 from The Coco-Cola Company to the opponent.

The opponent conceded the MOTHER LOADED ICE COFFEE trade mark had not been used in Australia, but relied on use since 2007 and reputation of its MOTHER marks for various energy drinks and exercise of discretion to retain this trademark registration at least for a restricted range of goods. However, the delegate was not satisfied that it is reasonable to retain this mark on the register for any of the registered goods.

The delegate noted that the opponent’s reputation was limited to energy drinks and in Frucor Beverages Limited v The Coca-Cola Company [2018] FCA 993, Yates J found that ‘[e]nergy drinks are accepted in the beverage industry as a separate and distinct category of non-alcoholic drink’ and are ‘presented to the public as a stand-alone drinks category’. Hence, the opponent’s reputation in this category did not have a significant bearing on the exercise of discretion in the context of  any of the registered goods.

 

Slimtox (Australia) Pty Ltd v Slim By Nature Pty Ltd [2019] ATMO 141 (26 September 2019)

This concerned cross-oppositions to trademark registration of DETOX26

Both companies conducted business in the weight loss field.

Slim By Nature claimed first use of DETOX26 in September 2016 for a 26 day body slimming detox program and filed its trademark applications on 3 April 2017 in classes 5 and 44.

Slimtox claimed first use of DETOX26 in February 2017. A trade mark application was filed on 4 April 2017 in classes 5 and 44 by Jennifer and Paul Whaland who assigned their rights on 14 November 2017 upon incorporation of Slimtox.

The delegate found Slim By Nature was the first user of DETOX26 in relation to goods and services connected with a dietary program. Its trade mark applications claimed an extended range of goods and services which had priority over the Slimtox application filed a day later and Slimtox could not show any earlier use for these extended goods or services.

Hence Slim By Nature was successful under the s58 ownership ground in its opposition to the DETOX26 trademark application of Slimtox.

Slimtox failed in its oppositions to the DETOX26 trademark applications filed by SlimBy Nature under the s58 ownership ground. It also relied on grounds of opposition under ss42(b), 60 and 62A but failed to establish any of those grounds.