Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions – September 2020

TRU Kids Inc v Bean bags R Us Pty Ltd [2020] ATMO 144 (1 September 2020)

Unsuccessful opposition by TRU Kids to trademark registration of ‘beanbags r us’ (Stylised) as shown below filed on 3 May 2018 for bean bags in class 20.

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

The opponent acquired the intellectual property rights of Toys R Us Inc, which ceased operations in 2018. This included rights to trademark registrations for Toys R Us and Babies R Us. The first Australian store opened in 1993 and there were 44 Australian stores in operation by 2018.

The applicant had been using the applied for mark for beanbags since 2011.

Under the s44 ground, the delegate did not consider the applied for mark to be deceptively similar to any of the opponents registered marks for TOYS “R” US or KIDS “R” US which covered similar goods. The delegate rejected the opponent’s contention that “R US” is an essential feature of the respective marks, particularly as this element was common to many other trade marks of others.

Under s60, the delegate was satisfied the opponent’s TOYS R US ( Stylised) mark had acquired a relevant Australian reputation for toy retailing, but did not consider there would be a likelihood of confusion.

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.

Boolabox Inc v Artspeed Pty Ltd [2020] ATMO 145 (1 September 2020)

Successful opposition by Boolabox to trademark registration of Yumlock (Stylised) filed on 10 January 2018 for various household containers in class 21.

The opponent prevailed under the s44 ground by relying on its prior trademark registration for YumBox covering lunchboxes in class 21. The delegate considered the applied for Yumlock mark to be deceptively similar to Yumbox.

Accolade Wines Australia Limited and Grant Burge Wines Pty Ltd v Burge Family Wine Estates Pty Ltd [2020] ATMO 146 (1 September 2020)

Unsuccessful opposition by Accolade Wines and Grant Burge Wines to trademark registration of P.N. Burge & Sons, BURGE + KIN (Stylised) and WALKER BURGE filed on 22 May 2018, 29 May 2018 and 8 November 2018 for alcoholic beverages in class 33.

The opponents relied on grounds of opposition under ss 42(b), 44, 60 and s62A but failed to establish any ground.

Grant Burge Wines was established by Grant and Helen Burge in 1979 and, since 1988, had produced wines under the GRANT BURGE trademark which was registered from March 2000. Accolade Wines acquired Grant Burge Wines on 2 February 2015.

As part of the acquisition by Accolade Wines, Grant and Helen Burge entered into a deed of restraint under which they agreed to not use or authorise any person to use ‘Burge’ in relation to the sale of wine. The deed required they procure the same agreement from their affiliates which was defined as including their children. There was no evidence as to whether either of the children entered into any agreement with their parents to give effect to this restraint.

The applicant was established in 2016 by Trent Burge and Amelia Thomas, who were the children of Grant and Helen Burge.

Under the s44 ground, the opponents relied on prior trademark registrations for GRANT BURGE and other composite marks containing BURGE. However, the delegate did not consider the applied for marks to be deceptively similar to any of these registered marks.

Under s60, the delegate was satisfied the opponents had established the GRANT BURGE mark had acquired a relevant Australian reputation. However, given the differences in the respective marks, the delegate considered confusion was unlikely.

The opponent also relied on its reputation under s42(b) to allege that use of the applied for marks 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.

The deed of restraint was relied upon under the s62A bad faith ground and it was not in dispute that the children were aware of this deed. However, the delegate commented “There is simply no evidence before me as to what has transpired between the Parents and the Children and in the absent any cross-examination of the witness, subpoenas or discovery, I simply have no basis to conclude whether it is more probable that the Parents breached their Deed or that the Children breached the obligations placed on them by the Parents. The question of which entity, if any, breached the Deed is a matter that can only be resolved in the court.”

The delegate went on to conclude “While the scope of the s62A ground does not require proof that the Applicant (or its controlling minds) has breached a formal legal obligation, I am not persuaded that the actions of the Children in potentially undermining the intent of the Deed of which they were aware but by which they were not prima facie bound is conduct that falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’. To find otherwise would be to import an obligation on the Children to comply with restraints in an agreement to which they were not (on the evidence before the Registrar) a party .

As a result, the opponents could not discharge their onus and so the s62A ground also failed.

This decision is under appeal in the Federal Court.

Fivepals Inc v Alice Corporation Pty Ltd [2020] ATMO 147 (1 September 2020)

Unsuccessful opposition by Alice Corporation to an application for removal of its trademark registration for Alice Inspired alleging no good faith use for the 3 years period ending on 25 September 2017.

The trademark registration dated from 8 December 1999 and covered various financial services and computer related goods and services in classes 9, 36 and 42.

Patent litigation in the US between 2007 – 2014 was not considered an obstacle to use by the opponent of its registered mark.

There was no evidence of any use of the registered mark during the relevant period and the delegate was not prepared to exercise discretion. Hence the delegate directed the trade mark be removed from the Register.

Jemie BV v ICAN Israel-Cannabis Ltd [2020] ATMO 148 (2 September 2020)

Successful opposition by Jemie to trademark registration of CANNATECH filed on 19 January 2017 for various educational related services in class 41.

The opponent prevailed under the s44 ground by relying on its prior trademark registration for CANNA covering educational and other services in class 41.

The applicant did not file any evidence or submissions.

The delegate considered the applied for CANNATECH mark was deceptively similar to the registered CANNA mark.

Eveden Inc. v CSM HOLDINGS AUSTRALIA PTY LTD [2020] ATMO 149 (7 September 2020)

Successful opposition by Eveden to trademark registration of CANDY SHOP GODDESSES filed on 27 April 2017 (with a divisional priority date of 3 June 2015) for clothing, footwear and headgear in class 25.

The opponent prevailed under the s44 ground by relying on its prior registration for GODDESS covering ‘brassieres, foundation garments and related ladies’ wearing apparel’ in class 25. Reliance was also placed on a prior registration for SEA GODDESS covering ‘clothing excluding underwear, lingerie, hosiery; footwear and headgear’ in class 25 which the decision indicates was owned by the opponent but was, in fact, owned by a different person and removed from the Register for non-renewal in May 2020.

The applicant did not file any evidence or submissions.

Reference was made to an earlier TMO decision where the opponent successfully opposed registration of SEAFOLLY GODDESS.

The delegate considered the applied for CANDY SHOP GODDESS mark was deceptively similar to the opponent’s registered GODDESS mark as they both conveyed the impression of celestial females.

The delegate also considered the applied for mark could be perceived as part of the opponent’s family of GODDESS marks arising from the prior registrations for GODDESS and SEA GODDESS. This is rather curious given the SEA GODDESS registration was not owned by the opponent and there are other registered marks in class 25 containing GODDESS owned by other parties.

It seems the applicant was disadvantaged by remaining silent and not filing any evidence.

Enterprise Above and Beyond Pty Ltd v Australian Rugby League Commission Limited [2020] ATMO 150 (8 September 2020)

Unsuccessful opposition by Enterprise Above and Beyond to trademark registration of STATE OF ORIGIN filed on 9 June 2015 (with a divisional priority date of 10 October 2013) for a broad range of goods in classes 16, 25 and 41. These goods and services were qualified as being for promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league.

The opponent relied on grounds of opposition under ss 41, 42, 43, 44, 58 and 62A but failed to establish any ground.

The opponent relied on its business name registration for State of Origin, domain name for stateoforigin.com.au, an online retail store using this domain name since 2004 and use by the AFL and other sporting bodies of the term ‘State of Origin’.

The applicant relied on use of the applied or mark since 1980 in connection with an annual series of rugby league football matches between professional teams representing the States of New South Wales and Queensland.

Under s41, the delegate considered STATE OF ORIGIN to have some slight inherent adaptation to distinguish some of the applied for goods and services in classes 16 and 41 and was capable of distinguishing the other goods and services. The applicant’s evidence of use demonstrated the acquisition of distinctiveness.

Under s42, the opponent argued the applicant’s behaviour was scandalous. However, the delegate found there was nothing in the applied for mark that would cause scandal under s42(a). The opponent also argued, under s42(b). that the applicant’s use of the applied for mark would be contrary to law under the common law doctrines of laches and estoppel, but there was no evidence to support this.

Under s43, the applicant argued use of the applied for mark would deceive or cause confusion because it would convey a connection with the opponent. However, this ground of opposition is directed to a connotation inherent in the applied for mark and not to any deception or confusion caused by the Australian reputation of some other mark.

Under s44, the marks which were owned by the opponent all had a later priority date than the applied for mark. There was one other registered mark for a composite mark containing the words STATE OF ORIGIN POLO owned by another party as shown below:

The delegate considered the applied for STATE OF ORIGIN mark to be deceptively similar to this registered mark, but the applicant’s evidence demonstrated prior continuous use of the applied for mark and it was appropriate to apply s44(4).

Under s58, the opponent relied on use of its mark shown below:

The delegate considered this mark to be substantially identical with the applied for STATE OF ORIGIN mark, but the opponent’s use was from 2003 whereas the applicant’s use of the applied for mark was from 1980. Hence, the opponent could not show a superior claim to ownership.

Under s62A, the opponent alleged bad faith because the applicant was well aware of the opponent’s business at the time of seeking registration of the applied for mark. However, many of the assertions by the applicant were not corroborated and there was insufficient cogent evidence to establish the very serious allegation of bad faith.

Efficient Homes and Construction Pty Ltd v Bubble Boy Enterprises Pty Ltd [2020] ATMO 151 (8 September 2020)

Unsuccessful opposition by Efficient Homes and Construction to trademark registration of BUBBLE BOY filed on 17 December 2017 for various bath products in class 3.

The opponent relied on grounds of opposition under ss 42(b), 43, 58 and 59 but failed to establish any ground.

The opponent did not file any evidence and hence could not discharge its onus of establishing any ground of opposition.

Promaz Automotive Pty Ltd v Billet Inco Pty Ltd [2020] ATMO 152 (8 September 2020)

Unsuccessful opposition by Promaz Automotive to trademark registration of BILLET PRO filed on 27 August 2017 for various engines and engine parts in classes 7 and 12.

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

The opponent did not file any evidence, but purported to rely on its trade mark registrations for BILLETPRO (word and logo) covering machining and metal machining in class 40. However, s44 was not a ground relied upon and, in any event, these registrations had a later priority date of 29 August 2017.

Given the absence of evidence, the opponent could not discharge its onus of establishing any ground of opposition.

GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI v HMS MYG b.v. [2020] ATMO 153 (15 September 2020)

Unsuccessful opposition by Galipoglu to an application for removal of its trademark registration for GALIPOGLU HIDROMAS Logo alleging no intention to use and no good faith use for the 3 years period ending on 24 November 2018.

The trademark registration dated from 22 August 2008 and covered pumps for pistons in class 7.

The Opponent’s evidence disclosed use of a logo mark which the delegate regarded as materially different to the registered mark and could not be relied upon to establish use of the registered mark.

The delegate was not persuaded by the opponent’s submissions on discretion and directed the trade mark to be removed from the Register.

Samuel Smith & Sons Pty Ltd v Cherish Corporation Pty Ltd [2020] ATMO 154 (18 September 2020)

Unsuccessful opposition by Samuel Smith to trademark registration of the  EPIC NEGOCIANTS Logo mark shown below filed on 4 September 2017 for wine in class 33.

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

Under s44, the opponent relied on its prior trademark registrations containing NEGOCIANT. However, a “negociant” is a type of merchant who produces, bottles or purchases grapes or similar for the purpose of making or retailing wine. The delegate did not consider the applied for mark to be deceptively similar to any of the opponent’s prior marks.

Under s58, the opponent asserted ownership of the word mark NEGOCIANTS for wine distribution. However, this ground also failed because the delegate did not consider NEGOCIANTS to be substantially identical with the applied for composite mark.

Under s60, the delegate was prepared to accept the opponent had established reputation in various trade marks containing NEGOCIANTS, but was not satisfied as to the 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 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.

Platinum Freight Management Pty Ltd [2020] ATMO 155 (22 September 2020)

The applicant was unsuccessful in overcoming a s41 distinctiveness objection against its application for trademark registration of PRE ARRIVAL ASSESSMENT filed on 22 October 2018 for various services in classes 36 and 39.

The applicant was a customs broker and the delegate considered the ordinary meaning of the words “pre arrival assessment” to members of the target audience would be an assessment conducted prior to arrival of the components (for example the government regulations and costs) involved in sending goods to Australia. Further, other traders would desire or need without improper motive to use these words or similar words for the sake of their ordinary meaning.

The delegate considered the applied for mark was not to any extent inherently adapted to distinguish the applicant’s services and considered this was a s41(3) case.

The applicant relied on supporting evidence of use since July 2016 but this was insufficient to show the acquisition of factual distinctiveness through use prior to the filing date.

Zipmoney Payments Pty Ltd v Certegy Ezi-Pay Pty Ltd [2020] ATMO 156 (24 September 2020)

Successful opposition by Zipmoney to trademark registration of NO INTEREST EVER! Filed on 24 November 2016 for various financial related goods and services in classes 9 and 36.

The mark was accepted with a s41(4) endorsement indicating supporting evidence of use was filed.

The opponent prevailed under the s41 distinctiveness ground.

The delegate considered this mark to be purely laudatory with no inherent adaptation to distinguish and so fell to be considered under s41(3).

The applicant relied on use of the mark since 2002 for a payment scheme, but the evidence disclosed use of ‘no interest ever’ with the applicant’s other marks and the delegate did not consider much of the material relied upon showed use in a trade mark sense and the evidence was insufficient to overcome the lack of distinctiveness.

Annco Inc v Nike Innovate CV [2020] ATMO 157 (30 September 2020)

Unsuccessful opposition by Annco to trademark registration of AEROLOFT filed on 20 September 2017 for footwear and apparel in class 25.

The opponent relied on grounds of opposition under ss 42(b), 44, 59 and 60 but failed to establish any ground.

The opponent is involved with manufacturing and retailing of women’s apparel and fashion accessories. The LOFT brand was initially used from 1995 in conjunction with ANN TAYLOR and then by itself from 2010 with online sales to Australia from February 2013. The opponent also owned an Australian trademark registration for LOFT dating from September 2013.

The applicant has been using the applied for mark in Australia from 2013.

The s44 ground was based on the opponent’s prior LOFT registration, but the delegate did not consider AEROLOFT to be deceptively similar to LOFT.

The s60 failed because the delegate was not satisfied the opponent’s evidence demonstrated a sufficient Australian reputation in the LOFT mark (although the evidence demonstrated a reputation in the ANN TAYLOR mark). Further, the delegate was not satisfied that the degree of similarity between the respective marks is such that it is likely to cause deception or confusion.

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.

Finally, under the s59 ground, the opponent argued the applicant lacked an intention to use the AEROFLOFT mark and its intention was to use NIKE AEROLOFT. However, the delegate was not satisfied that the opponent had established a prima facie case such as to cause the evidentiary onus to shift back to the applicant to prove its intention.

Noshu Foods Pty Ltd [2020] ATMO 158 (30 September 2020)

The applicant was able to overcome a s41 distinctive objection raised during examination of its application filed on 27 August 2019 to register the trademark SNACKLES for a broad range of confectionery and snack foods in class 30.

The examination objection was based on “snackles” being a colloquial term for snack food as ascertained from internet research pointing to this term being included in recipes and a Wiktionary entry. The recipes originated from a single person in the USA. The delegate considered these references did not demonstrate sufficient common use in the marketplace which may give rise to an ordinary signification of the term “snackles” to consumers in Australia. The delegate agreed with the applicant that the applied for mark was a newly coined phrase or neologism which qualified for registration.

Annco Inc v Peter Sheppard Footwear Pty Ltd [2020] ATMO 159 (30 September 2020)

Successful opposition by Annco to trademark registration of The Slumber Loft filed on 18 December 2017 for various clothing items.

The applicant filed evidence, but did not file submissions or participate in the hearing.

The opponent prevailed under the s44 ground by relying on its prior registration for LOFT. The delegate considered The Slumber Loft was deceptively similar to LOFT.

This case was decided by a different delegate to the AEROLOFT case above where there was no deceptive similarity with LOFT.