Trade Mark News & Information

Trademark Registration Sydney – ATMO Decisions -September 2021

Pernod Ricard Winemakers Pty Ltd v Clare Frances Eddington and William Henry Eddington [2021] ATMO 94 (2 September 2021)

Unsuccessful opposition by Pernod Ricard to trademark registration of Richmond Park Estate filed on 4 March 2019 for various goods in class 24 as well as wine related goods and services in classes 33, 35 and 43.

The opponent relied solely on the s44 ground based on its prior registration for RICHMOND GROVE for relevant goods in class 33. However, the delegate did not consider the applied for Richmond Park Estate mark to be deceptively similar to the opponent’s registered RICHMOND GROVE mark. This was in contrast to an earlier 2018 ATMO decision where RICHMOND PARK was found to be deceptively similar to RICHMOND GROVE.

Macquarie University v In2marketing.com.au Pty Ltd and Macquarie Institute of Technology Pty Ltd [2021] ATMO 95 (2 September 2021)

Successful opposition by Macquarie University to trademark registration of Macquarie Institute filed on 28 August 2019 for various education related services in class 41.

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

Jaguar Land Rover Limited v Joseph Vogele AG [2021] ATMO 96 (3 September 2021)

Unsuccessful opposition by Jaguar to trade mark registration of VOGELE filed on 19 August 2016 for various goods and services in classes 1,4,6,7,8,9,11,12,16,17,20.21.28,35,37,38, 41 and 42.

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

Under s44, the opponent relied on its prior VOGUE mark for motor vehicles, but the delegate did not consider the applied for VOGELE mark to be deceptively similar to VOGUE.

Under s59 the opponent’s evidence was insufficient to establish a prima facie case that the applicant lacked an intention to use the applied for mark and so the onus did not shift to the applicant.

Samuel Smith & Son Pty Ltd v Southern Vintners & Negociants Pty Ltd [2021] ATMO 97 (6 September 2021)

Successful opposition by Samuel Smith to trademark registration of Southern Vintners & Negociants filed on 24 April 2019 for various goods in classes 32 and 33, and cellar door sales of wine in class 35.

The opponent prevailed under the s44 ground by relying on its prior applications for NEGOCIANTS covering wine in class 33 and various retail and other services in class 35 relating to wine.

The word “negociants” is of French origin meaning “trader”. There is also a dictionary reference to this word referring to a wine merchant but there was no evidence this usage was particularly common in Australia. Despite this, the delegate considered the applied for mark to be deceptively similar to NEGOCIANTS.

The applicant is opposing registration of the opponent’s class 35 application for NEGOCIANTS. The opponent’s class 33 application is still pending.

Viacom International Inc v Helium Pictures Pty Ltd [2021] ATMO 98 (6 September 2021)

Successful opposition by Viacom to trademark registration of BEHIND THE SONG filed on 27 March 2019 for entertainment services in class 41.

The opponent prevailed under the s44 ground by relying on its prior trademark registration for BEHIND THE MUSIC covering various entertainment services in class 41.

The delegate considered the applied for BEHIND THE SONG trade mark to be deceptively similar to BEHIND THE MUSIC.

Zinpro Corporation v Australia Lockey Biotechnology Pty Ltd [2021] ATMO 99 (9 September 2021)

Successful opposition by Zinpro to trademark registration of synpro+ filed on 16 April 2019 for pharmaceuticals in class 5.

The opponent prevailed under the s44 ground by relying on its prior trademark registrations for ZINPRO covering additives to fodder for medical purposes in class 5 and ZINPRO PERFORMANCE MINERALS covering veterinary preparations and mineral supplement for animals in class 5.

The delegate considered the applicant’s broad claim to pharmaceuticals embraced similar goods to those covered by the opponent’s registered marks and found the applied for synpro+ trade mark to be substantially identical with ZINPRO.

Significantly, the applicant did not file any evidence or participate in the opposition.

Grocery Industries Australia Pty Ltd v Sharmas Kitchen Pty Ltd [2021] ATMO 100 (10 September 2021)

Unsuccessful opposition by Grocery Industries to an application for removal of its registration for the trade mark Sharma’s Logo alleging no good faith use in the relevant 3 years period ending 1 September 2019 for the registered goods.

The registration dated from 20 August 2012 and covered various foodstuffs in classes 29 and 30.

While the evidence disclosed some use of the registered mark after 2013 for roti bread, it was insufficient to establish such use was authorised by the owner and the delegate declined to exercise discretion to allow the mark to remain on the Register.

Conga Foods Pty Ltd. [2021] ATMO 101 (10 September 2021)

This was a relatively rare application for defensive trademark registration of MORO where the applicant was able to partly overcome an examination objection and achieve acceptance for limited goods and services.

These cases ultimately turn on the evidence where it is necessary for an applicant to establish that, because of the extent to which the trade mark has been used for goods for which it is already registered, it is likely that its use in relation to other goods or services will indicate a connection with the registered owner.

Here the MORO mark had been used for many years in relation to olive oil, as well as vinegar, canned fish, preserved olives and artichokes.

The case contains useful background on defensive trademark registration and relevant considerations in assessing evidence.

Sojo Pty Ltd v Rebel Power Pty Ltd [2021] ATMO 102 (15 September 2021)

Successful opposition by Sojo to trademark registration of SHIT HOT TRADIE filed on 13 February 2018 for various apparel in class 25.

The opponent prevailed under the s60 ground by relying on the Australian reputation of its TRADIE mark used since 2010 initially for undergarments and subsequently for outerwear, workwear, shoes and sleepwear.

Honda Motor Co [2021] ATMO 103 (16 September 2021)

The applicant was able to overcome an objection raised during examination of its application for trademark registration of eHEV Logo shown below filed on 23 January 2020 for hybrid electric automobiles in class 12.

The examiner raised an objection based on a prior trademark registration for (HEV) HARSH ENVIRONMENT VEHICLES covering, inter-alia, various parts and accessories for vehicles in class 12.

The delegate agreed with the applicant that the applied for mark is not deceptively similar to the prior registered mark.

Superfinish Automotive Pty Ltd v Honeys Group of Companies [2021] ATMO 104 (17 September 2021)

Successful opposition by Superfinish Automotive to an application for partial removal of its registration for the trade mark HONEY I SCRATCHED THE CAR alleging no good faith use in the relevant 3 years period ending 10 June  2019 for specific services, namely “vehicle washing and cleaning; vehicle detailing”.

The registration dates from 31 August 2007 and covers construction and repair services in class 37 including those services relating to vehicles.

The delegate was satisfied the evidence rebutted the allegation of non-use.

BOLERO Co. Ltd. v RSD Holdings Limited [2021] ATMO 105 (21 September 2021)

Partly successful opposition by Bolero to trademark registration of C Logo shown below filed on 17 May 2019 for various goods in classes 5, 24 and 25.

The opponent prevailed under the s44 ground by relying on its prior trademark registration for B Logo shown below covering various goods and services including in class 25.

The delegate considered the applied for C Logo mark to be deceptively similar to the opponent’s registered B Logo mark and refused registration for class 25 goods.

The applied for mark was permitted to proceed for the remaining goods in classes 5 and 24 as the opponent was unable to establish any other ground of opposition under ss 42(b), 58, 60 or 62A.

KTSN Development Pty Ltd v Miniport Holdings Pty Ltd [2021] ATMO 106 (21 September 2021)

Successful opposition by KTSN to trademark registration of MINIPORT Logo shown below filed on 4 June 2019 for internet service provider services in class 38.

The opponent prevailed under the s58 ownership ground by relying on its prior trade mark use from 2015 of Miniport for a residential ISP business.

Campfire Creative Agency Pty Ltd [2021] ATMO 107 (22 September 2021)

The applicant was unable to overcome revocation of acceptance of its application for trademark registration of RV 24/7 filed on 4 February 2021 for various retail services in class 25 and entertainment services in class 41.

Revocation of acceptance was on the basis of the applied for mark being descriptive when used in relation to the retailing of recreational vehicles and entertainment and television programs that are vehicle related and provided continuously around the clock. The delegate agreed it was reasonable to revoke acceptance.

Simec Zen Energy Pty Ltd v Zen Ecosystems IP Pty Ltd [2021] ATMO 108 (27 September 2021)

Unsuccessful oppositions by Simec Zen Energy to trademark registration of Zen HQ, ZEN ECOSYSTEMS and ZEN AIR for various goods and services relating to climate and energy management in classes 9, 35 and 42,

The grounds of opposition under ss 42(b), 58 and 60 failed because the opponent did not file any evidence.

The only ground which could be considered was under s44 based on the opponent’s prior registration for trade marks containing ZEN. However, they covered different goods and there was no evidence which could be considered when assessing the ‘goods of the same description’ issue and the benefit of the doubt was given to the applicant. The delegate did discuss potential similarity with the opponent’s solar heating apparatus and equipment, but ultimately found in favour of the applicant.

The opponent also relied on a prior registration for ZEND covering software and owned by another party, but the delegate considered the applied for marks were not deceptively similar to that registered mark.

Speedo Holdings B.V. v The Brand Republik Pty Ltd [2021] ATMO 109 (28 September 2021)

Unsuccessful opposition by Speedo to trademark registration of Sculpteur filed on 20 May 2019 for various fabrics in class 24.

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 registration for SCULPTURE in class 25, but the delegate considered the applicant’s class 24 goods were not similar.

Under s60, the opponent relied on use of SCULPTURE mark since 2010 for swimwear. The delegate considered it had some level of reputation, albeit as a secondary brand used in close proximity to SPEEDO. Nonetheless, given the differences in the respective goods, confusion was unlikely.

The s58 ownership ground failed because the delegate did not consider the applied for Sculpteur mark to be substantially identical with SCULPTURE.

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

Amazonia IP Holdings P/L [2021] ATMO 110 (29 September 2021)

The applicant was unable to overcome a non-distinctiveness objection raised during examination of its application for trade mark registration of Raw filed on 22 July 2020 for various dietary and nutritional supplements in class 5.

The delegate agreed with the examiner’s research indicating the word “raw” had an ordinary meaning to descriptive supplements which have a natural or non-synthetic character. The applicant relied on use of the Raw mark, but that was primarily in combination with a graphic design element and insufficient to overcome the low level of inherent distinctiveness of the word “raw”.

The Cookware Company Global Sourcing Limited [2021] ATMO 111 (30 September 2021)

The applicant was unable to overcome a non-distinctiveness objection raised during examination of its application for trade mark registration of BLUE PAN (stylised) shown below filed on 2 January 2020 for various cooking articles in class 21.

The delegate agreed with the examiner that the mark has an ordinary meaning as indicating blue coloured pans for cooking and the stylised rendering did not meaningfully interfere with this ordinary descriptive meaning. The applicant’s use of this mark from June 2018 was insufficient to support registration.