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.