ATMOsphere – Trade Marks Office Decisions – December 2014

ATMOsphere: Our regular trade mark series of posts that aim to keep our readers up-to-date on what has been happening in the world of Trade Marks Office decisions. Here, our aim is both to provide a very high level summary of those decisions, and to provide an interesting and useful snapshot of the previous months of decisions.

For our December 2014 Christmas Special, we bring you the Trade Marks Office decisions from September to December 2014.

PROCEEDINGS FOR OPPOSITION TO THE REGISTRATION OF A TRADE MARK

Case Trade Mark Ground(s) of opposition Decision of TMO
Doric Management Pty Ltd v Loukat Holdings Pty Ltd [2014] ATMO 99 (4 September 2014) In classes 19, 37, 40 –> REGISTRATION REFUSED The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade marks and (section 60). Ground established – given the degree of similarity between the proposed and existing trademarks, the opponent’s reputation, and the similarity in respective services and closely related goods between the parties, a significant number of consumers would at the very least speculate as to some sort of connection between the well-known trade mark of the opponent, and the applicant’s trade mark.
Novartis AG v Obvieline [2014] ATMO 79 (5 September 2014) SYNECTHA In class 5 à International Registration Designating Australia (“IRDA”) protection request –> EXTENSION OF PROTECTION TO AUSTRALIA REFUSED Trade mark substantially identical or deceptively similar to SYNACTHEN trade mark registered for similar goods (section 44). Ground established – trade marks share a common prefix along with other common letters and syllables. Notional usage of both marks suggests usage on the same and similar pharmaceuticals, and the likelihood of rises with the increased similarity of the goods. There is a real and tangible likelihood of confusion created by the use of the trade mark.
Argenta Limited v Argenta Discovery 2009 Limited [2014] ATMO 80 (8 September 2014) ARGENTAIn classes 16 and 42 –> REGISTRATION REFUSED The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark ARGENTA and argentă (section 60). Ground established – trade marks of the parties are identical and the goods and services involved are to all intents the same or very closely related. The reputation of the Opponent’s trade marks is such that the use of the Trade Mark is likely to confuse or deceive.
Major League Baseball Properties, Inc. v Spartan Sports Holdings Pty Ltd [2014] ATMO 81 (9 September 2014) TWINS In class 28 –> PROCEED TO REGISTRATION Trade mark substantially identical or deceptively similar to trade mark registered for similar goods (section 44). Ground not established – when both marks are considered as a whole, it is not likely that deception or confusion will be caused amongst a significant number of people. The distinguishing characteristics of the word ‘Minnesota’ and the baseball device on the Opponent’s trade mark means there is not a real danger of persons being left in doubt as to whether the goods made by both trade mark owners come from the same source.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark (section 60). Ground not established – it is not possible to ascertain the nature or extent of the reputation (if any) of the Opponent’s TWIN mark in Australia, and therefore the trademark does not enjoy the kind of reputation contemplated by s 60 amongst a significant number of Australian consumers. Therefore use of the opposed mark unlikely to cause deception or confusion.
Bendigo Cemeteries Trust [2014] ATMO 82 (10 September 2014) REMEMBRANCE PARKS CENTRAL VICTORIA In classes 12, 16, 25, 35, 42, 45 –> REGISTRATION REFUSED. PROCEED TO REGISTRATION IF APPLICATION RESTRICTED TO CLASS 35 ‘WEBSITE BRANDING’ Trade mark not capable of distinguishing applicant’s goods and services (section 41). Grounds established – Where business name is being used to refer to a trader, rather than to its goods and/or services, that name is not being used as a trade mark: it is not being used to distinguish goods or services in trade but to refer to the trader itself. Further, trade mark had low inherent adaption to distinguish. Mark was a “limping” trade mark for
Facebook, Inc v FACEMBA, LDA [2014] ATMO 83 (10 September 2014) FACEMBAIn class 38 – IRDA protection request –> PROTECTION REFUSED The use of the trade mark would likely deceive and cause confusion because of the reputation of the Opponent’s trade marks for FACEBOOK (section 60). Ground established – given the Opponent’s reputation in the area of social networking and Internet platforms, deception or confusion with FACEBOOK and the Holder’s mark FACEMBA is likely. Consumers confronted with a social networking platform with the prefix FACE- would be caused to wonder if it was associated with the Opponent.
Save My Bacon Ltd v Marketing Intelligence Ltd [2014] ATMO 84 (12 September 2014) SAVE MY BACON In classes 35, 36, 41–> REGISTRATION REFUSED The application for registration of the trade mark was made in bad faith (s 62A). Grounds established – inference could be drawn that the Applicant’s purpose for registering the trade mark was to gain traction in negotiations with the Opponent or frustrate the Opponent’s intended business activities in Australia. A reasonable person standing in the Applicant’s shoes would know they ought not to apply for the registration of the Trade Mark.
Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85 (15 September 2014) In class 44 –> REGISTRATION REFUSED The applicant was not the owner of the trade mark, because the Opponent owned the Trade Mark (section 58). Ground established – the opponent had authorised and used a trade mark which was substantially identical. Both Trade Mark devices were differing versions of the same thing, both with inner and outer circle, contrast between inner and outer circle, and break on the right hand side. Differing representations of the same thing present with other essential feature of both services being known and identified by ‘insight’.
Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87 (16 September 2014) CARS ON DEMAND In class 39 –> EXTENSION OF PROTECTION ALLOWED That because of a connotation that the trade mark has, the use would be likely to deceive or cause confusion (section 43). Ground not established –Deception or confusion caused as a result of similarity to another trade mark is outside the scope of s 43. The likelihood of deception or confusion must flow from the secondary meaning inherent in the trade mark itself.
The trade mark was identical or deceptively similar to the opponent’s marks CARS ON DEMAND and (section 44). Ground not established – the Opposed Mark was quite different from and readily distinguishable from, the Opponent’s device mark when the marks are compared as wholes. Where descriptive words are used between two trades, some risk of confusion must be accepted otherwise an unfair monopoly in those words may arise. The Opponent’s Word Mark was for services that were not similar to the services of the IRDA.
That the applicant was not the owner of the trade mark (section 58). Ground not established – the use by the Opponent of the words ‘cars on demand’ is insufficient to found the Opponent’s claim to their exclusive ‘ownership’ for relevant services. Trade marks not substantially identical, as the ‘total impression of resemblance or dissimilarity that emerges’ is one of dissimilarity.
B Seppelt & Sons Ltd and Tucker Seabrook (Aust) Pty Ltd v Blaxland Vineyards Limited [2014] ATMO 88 (17 September 2014) In class 33 –> REGISTRATION REFUSED That because of a connotation that the trade mark has, the use would be likely to deceive or cause confusion (section 43). Ground established – the Applicant’s vineyard is not in the Tanunda region, and use of the trade mark would lead ordinary people to believe that the words refer to an actual place where the grapes are grown or the wine produced. The vast bulk of wine consumers are uninformed and would likely be deceived or confused.
Head Technology GmbH v Uloc Pty Ltd [2014] ATMO 90 (23 September 2014) WAXHEAD In class 28–> PROCEED TO REGISTRATION That the trade mark was not capable of distinguishing the applicant’s goods and services (section 41). Ground not established – The word “waxhead” does not have such a direct association with surfing goods that other traders would be expect to use the term for similar goods. The goods of the applicant include items particular to surfing.
Trade mark substantially identical or deceptively similar to trade marks and HEAD registered for similar goods (section 44). Ground not established – likelihood of deception or confusion is remote. WAXHEAD is a common colloquial term whereas HEAD is a common noun and surname and does not reference any goods in particular.
That because of a connotation that the trade mark has, the use would be likely to deceive or cause confusion (section 43). Ground not established – In Australia the connotation of the Applicant’s Trade Mark is in reference to a dedicated surfer. There is nothing to suggest that the Trade Mark connotes the Opponent’s goods or business.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark (section 60). Ground not established – the Opponent’s goods may have a reputation in Europe for being associated with winter sports, but are more known in Australia for their racquets. There is not likely to be a real likelihood of deception or confusion.
The applicant was not intending to use the trade mark (section 59). Ground not established – the Applicant need only apply the Trade Mark to the goods, it need not manufacture the goods. No reason to think that the Applicant lacked genuine intention to use the Trade Mark in relation to surfing goods.
Southcorp Brands Pty Ltd v Winston Wine Pty Ltd [2014] ATMO 91 (23 September 2014) WYNWOOD, WYNWEST, WYNWOOD ESTATE, WYNWEST WINE, In classes 32, 33, 35, 43 –> PROCEED TO REGISTRATION Trade mark substantially identical or deceptively similar to WYNNS/WYN trade mark registered for similar goods (section 44). Ground not established – Opponent does not own all trade marks beginning with WYN, and of those it does own there is no common pattern of WYN prefix. The notoriety of WYNNS is unlikely to be confused with the prefix WYN. Therefore it is not likely that the trade marks will deceive or confuse.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark WYNNS (section 60). Ground not established – the Opponent only uses the WYNNS name in its entirety, and therefore confusion or deception regarding the use of the prefix WYN is unlikely.
The applicant was not intending to use the trade mark (section 59). Ground not established – Applicant intending to use the WYN trade marks in addition to existing trade marks.
Commonwealth & 8Ors v Primary Health Care Ltd [2014] ATMO 92 (24 September 2014) PRIMARY HEALTH CARE, In class 35 –> REGISTRATION REFUSED That because of a connotation that the trade mark has, the use would be likely to deceive or cause confusion (section 43). Ground established – the trade marks include a description of services that are not in fact provided by the applicant. Patients are unlikely to appreciate that the Applicant is only responsible for the provision of management and administrative services to medical practitioners. The trade mark is likely to cause confusion.
The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2014] ATMO 93 (26 September 2014) Design Hunter In class 35 –> REGISTRATION REFUSED That the trade mark was not capable of distinguishing the applicant’s goods and services (section 41). Ground not established – the word “hunter” in the context of design is not so directly descriptive as to lack ability to distinguish the Applicant’s services.
That the applicant was not the owner of the trade mark (section 58). Ground established – the Opponent used substantially identical mark for retailing services and for interior design services before the Priority Date. The Applicant’s intended use of the mark for “experiential consumer events” is effectively the “same kind of thing” as retail services for which the Opponent’s mark is used.
Nikon Corporation v Nison Engineering Co Pty Ltd [2014] ATMO 95 (2 October 2014) In classes 6, 7, 11, 20, 37 –> PROCEED TO REGISTRATION Trade mark substantially identical or deceptively similar to NIKON trade mark registered for similar goods (section 44). Ground not established – verbal use of the respective trade marks do not sound sufficiently alike such that there is a real likelihood of deception or confusion occurring. The Trade Mark was enclosed within a two-tone rectangle.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark NIKON (section 60). Ground not established – consumers will not expect the Opponent’s well-known NIKON trade mark to be extended to kitchen and catering equipment and machines. There is not a real, tangible danger or deception or confusion occurring through the Applicant’s use of the trade mark.
Brenda Robinson v Nature’s Gift Australia P ty Ltd [2014] ATMO 96 (9 October 2014) NATURE’S GIFT SNAP BARIn class 31 –> REGISTRATION REFUSED Trade mark substantially identical or deceptively similar to various marks, including SNAPS and SNAPZ registered for similar goods (section 44). Ground established – The prominence of the element ‘SNAP BAR’ within the trade mark makes it very likely that it will be perceived as being related to the trade mark SNAPS or SNAPZ despite the presence of ‘NATURE’S GIFT’. Trade mark is deceptively similar to Opponent’s trade mark.
GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited v AFT Pharmaceuticals Limited [2014] ATMO 100 (9 October 2014) PARACETAMOL OSTEO-TAB In class 5 –> PROCEED TO REGISTRATION That the trade mark was not capable of distinguishing the applicant’s goods and services (section 41). Ground not established – the mark is at least to some extent inherently adapted to diminish the Applicant’s goods. The mark as a whole is not apt for normal description of the goods and it is unlikely to be warranted or needed by others for legitimate descriptive purposes.
The use of the trade mark would be contrary to law because its use would be likely to mislead or deceive, having regard to the opponent’s marks (section 42). Ground not established – the respective pack designs are quite different and unlikely to be confused for one another. There is not a likelihood that consumers will be misled or deceived.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark “Panadol Osteo” (section 60). Ground not established – both products are classified as “pharmacy medicine” and therefore sale is moderated by a pharmacist. Therefore confusion or deception that the goods came from the same source or enjoyed some other relevant connection is unlikely.
The application for registration of the trade mark was made in bad faith (s 62A). Ground not established – the Applicant’s actions do not amount to conduct which “falls short of the standards of acceptable behaviour observed by reasonable and experienced persons”. No evidence that the Applicant intended to trade off the Opponent’s reputation.
Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103 (20 October 2014) HEAVENLY In classes 6, 19, 37 –> REGISTRATION REFUSED That the applicant was not the owner of the trade mark (section 58). Ground established – the parties’ trade marks are substantially identical. HEAVENLY is viewed as the badge of origin of many of the Opponent’s goods, and both parties trade in skylights.
Renaissance Hotel Holdings Inc v Ravida Properties Pty Ltd [2014] ATMO 105 (24 October 2014) RENAISSANCE LIVINGIn class 43 –> PROCEED TO REGISTRATION Trade mark substantially identical or deceptively similar to trade mark RENAISSANCE RETIREMENT LIVING registered for similar goods (section 44). Ground not established – essential characteristics of parties’ services differ as Opponent claims services relating to accommodation for tourists, and Applicant claims services relating to accommodation in retirement homes. Trade channels through which parties’ services are procured differ markedly. ‘RENAISSANCE’ is not the same order of distinctiveness as an invented word.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark (section 60). Ground not established – evidence does not suggest a reputation in Australia for the Opponent’s trade mark, but even were this the case confusion would not be likely as the essential characteristics and trade channels of the parties differ markedly and trade marks are not so unusual that they would be thought to originate from the same source.
Midmark Corporation v Ritter Concept GmbH [2014] ATMO 106 (24 October 2014) RitterIn classes 10, 11, 20 –> IRDA REFUSED PROTECTION That the applicant was not the owner of the trade mark (section 58). Ground established – Applicant’s use of the trade mark from the 1950s or late 1980s has not been established. The Opponent has established earliest use of the trade mark in relation to goods which are the same kind of thing as the goods in the IRDA.
Techtronic Power Tools Technology Limited v Global Power Brands International Pty Ltd. [2014] ATMO 109 (4 November 2014) SAWZILLA In class 7 –> PROCEED TO REGISTRATION Trade mark substantially identical or deceptively similar to SAWZALL trade mark registered for similar goods (section 44). Ground not established – likelihood of confusion or deception is very remote. The Trade Mark would be understood as an invented word which borrows from the fictional character GODZILLA. The ‘SAW’ element would be seen as descriptive of the goods and would not bring to mind the Opponent’s mark.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark SAWZALL (section 60). Ground not established – the Opponent’s Mark has a limited reputation in Australia and the danger of confusion between the marks is marginal.
The use of the trade mark would be contrary to law because its use would be likely to mislead or deceive, having regard to the opponent’s marks (section 42). Ground not established – for the same reasons as in sections 44 and 60, there is nothing to suggest the use of the Trade Mark would be contrary to law.
The application for registration of the trade mark was made in bad faith (s 62A). Ground not established –mere knowledge of the Opponent’s Mark is not the sole determinant of bad faith; nothing on the evidence to suggest bad faith at the time of application.
Australian rugby league commission limited of rugby league v Jane Reid [2014] ATMO 108 (5 November 2014) THE MIGHTY MAROONS In classes 9, 16, 18, 21, 24, 25, 28 –> REGISTRATION REFUSED The use of the trade mark would be contrary to law because its use would be likely to mislead or deceive(section 42). Ground established – a number of people were likely to be misled or deceived into identifying the words ‘the Mighty Maroons’ with the Queensland State of Origin team and think that the Applicant’s merchandise has the sponsorship or approval of the Opponent.
Bose Corporation v Heino Buse MX Import GmbH [2014] ATMO 110 (18 November 2014) BUSE In classes 9, 12, 18, 25, 28 –> IRDA GRANTED PROTECTION Trade mark substantially identical or deceptively similar to BOSE trade mark registered for similar goods (section 44). Ground not established – the inclusion of the ‘Ü’ in the Holder’s mark is an unfamiliar character not in the standard Latin alphabet with which most Australians would be familiar. The marks are sufficiently different in sound and appearance that there is no real tangible danger of deception or confusion occurring in the marketplace.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark BOSE (section 60). Ground not established – the Opponent’s reputation is mainly in high-end audio visual goods, and consumers would not be likely to confuse these with the various motor vehicle components and accessories dealt with by the Holder. Further, the goods sold by the Opponent are expensive and consumers are likely to take care in purchasing the relevant goods.
Mars Australia Pty Ltd v Delfi Chocolate Manufacturing [2014] ATMO 113 (4 December 2014) MALTITOS In class 30 –> REGISTRATION REFUSED Trade mark substantially identical or deceptively similar to MALTESERS trade marks registered for similar goods (section 44). Ground not established – an overall comparison of the words ‘ MALTESERS’ and ‘MALTITOS’ suggests they are visually and aurally distinct. Even if consumers pay proportionately smaller amounts of attention to purchasing consumable goods of this sort, there is not a real and tangible danger of deception or confusion.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade marks MALTESERS (section 60). Ground established – were the Applicant to use the script and style of packaging as MALTESERS packets (which would be within the scope of the registration of the application), there would be a real and tangible danger of deception or confusion.
Bridgstone Licensing Services Inc v Marshalls Mono Limited [2014] ATMO 114 (8 December 2014) FAIRSTONEIn class 19 –> IRDA GRANTED PROTECTION. Trade mark substantially identical or deceptively similar to FIRESTONE trade mark registered for similar goods (section 44). Ground not established – ‘STONE’ is a common descriptive term for some building materials within the class. The purchase of building materials is not likely to be made on impulse but after time and research. The marks are sufficiently different in sound and appearance that there is no tangible danger of deception or confusion.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark FIRESTONE (section 60). Ground not established – the Opponent has a reputation for primarily trading in vehicle tyres and rubber waterproof pond liners. Consumers would not expect pool liners to be from the same source as the building and paving goods dealt with by the Holder.
The use of the trade mark would be contrary to law because its use would be likely to mislead or deceive, having regard to the opponent’s marks (section 42). Ground not established – as the trade mark is not likely to “confuse” under sections 44 and 60, it follows that use is not likely to mislead or deceive under section 42.
Q1 CTS 34498 Body Corporate v Q1 Management Pty Lt [2014] ATMO 116 (9 December 2014) Q1 In classes 36, 39, 35, 43 AND Q1 RESORT AND SPA In classes 36, 39, 43 –> PROCEED TO REGISTRATION Sections 41, 42, 44, 58, 62A, 43, 62, 59. Grounds not established – Opponent did not provide any submissions in support of its oppositions. Unclear which grounds relied upon or how evidence supported any of the grounds.
Combined Communications Pty Ltd v Combined Communication Solutions Pty Lt [2014] ATMO 117 (12 December 2014) COMBINED COMMUNICATIONS SOLUTIONS In classes 37, 38, 42 –> REGISTRATION REFUSED Trade mark substantially identical or deceptively similar to COMBINED COMMUNICATIONS trade mark registered for similar goods (section 44). Ground established – the word elements in common between the device trade marks lack inherent adaptation to distinguish. Deception or confusion is likely to occur.
That the applicant was not the owner of the trade mark (section 58). Ground not established – Opponent had shown limited use of the trade mark and could not establish ownership.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the opponent’s trade mark COMBINED COMMUNICATIONS (section 60). Ground not established – Opponent did not establish that its trade marks had a reputation as the limited use of the Trade Mark in radio commercials was insufficient to establish a reputation. Deception or confusion was unlikely to occur.

 

OTHER PROCEEDINGS

Case Trade Mark Proceeding Outcome
Bendigo Cemeteries Trust [2014] ATMO 86 (16 September 2014) [email protected] In classes 16, 25, 35, 42, 45 –> REGISTRATION REFUSED EXCEPT FOR CREMATION SERVICES Whether the trade mark was not capable of distinguishing the applicant’s goods and services (section 41). Registration Refused – trade mark lacks inherent adaption to distinguish to some degree or other in relation to most of the goods and services with the exception of crematoria services which cannot be conducted in people’s homes. The expression ‘[email protected]’ refers to an activity that might be provided by any trader.
One Mode Productions Limited [2014] ATMO 89 (24 September 2014) 5SOSIn classes 9, 16, 25, 41 –> REGISTRATION REFUSED Whether the trade mark was substantially identical or deceptively similar to trade mark registered for similar goods, including SOS, ,and(section 44). Registration Refused – Hearing Officer unfamiliar with pronunciation of the trade mark as “five soss” (a contraction of the name of the band ‘5 Seconds of Summer’), and therefore determined that the mark would be pronounced “5 S.O.S.”, being recognisable as the distress call S.O.S.. Confusion was likely to arise with the cited marks.
A2 Corporation Ltd [2014] ATMO 94 (1 October 2014) TRUE A2 In classes 5, 44 –> REGISTRATION REFUSED Whether the trade mark was capable of distinguishing the applicant’s goods and services (section 41). Registration Refused – The expression ‘TRUE A2’ has a readily apparent meaning in respect of animal breeding products and is likely to be desired for use by other traders. No evidence of sufficient use by Applicant to the extent that ‘TRUE A2’ would distinguish the Applicant’s goods from other traders.
Parish of Pokolbin Incorporated [2014] ATMO 98 (9 October 2014) PARISH OF POKOLBINIn classes 33, 35, 41, 43 –> REGISTRATION REFUSED Whether the trade mark could be registered as a certification mark for a geographical indication (section 177). Registration Refused – trade mark lacks sufficient inherent adaption to distinguish the Applicant’s goods and services and there was very limited use before the filing date.
Arrow Research Corporation Pty Ltd v Kabushiki Kaisha Tokyo Torihikisho (Tokyo Stock Exchange Inc.) [2014] ATMO 97 (9 October 2014) ARROWNET In class 9 –> PARTIAL REMOVAL FROM REGISTER Application for removal for non-use (92(4)(a) and (b)) Registration removed for particular goods – While the Removal Opponent intended to use the trade mark, it had not actually been used in the three year period.
Negro International Pty Ltd v Winstons Wine Pty Ltd [2014] ATMO 102 (17 October 2014) WINSTONSIn class 33 –> PARTIAL REMOVAL FROM REGISTER Application for removal for non-use (92(4)(a) and (b)) Registration partly removed – the Opponent has used the trade mark after registration and throughout the relevant period on a genuine commercial basis in relation to gin. However, the evidence does not establish that the Opponent sold wine bearing the trade mark during the relevant period. Alcoholic beverages other than gin have not been used under the Trade Mark during the relevant period.
Supacat Limited v Caterpillar Inc [2014] ATMO 104 (23 October 2014) SUPACAT In class 12 –> REMAIN ON REGISTER Application for removal for non-use (92(4)(a) and (b)) Registration to remain – Removal Opponent has used Trade Mark both on tender documents and in advertisements in Australia within the relevant period. Use of Registrar’s discretion would be in favour of allowing Trade Mark to remain registered.
Endeva Pty Ltd. [2014] ATMO 107 (30 October 2014) TASMAN In class 25 –> ACCEPTANCE OF TRADE MARK REVOKED Application for removal on the basis that the trade mark is deceptively similar to an earlier mark ‘UGG TASMAN AUSTRALIAN SHEEPSKIN’ for goods of the same description (section 44), which was not identified during examination (section 38). Registration removed – both parties’ goods are footwear, and the word TASMAN is the common striking element in both trade marks. It is likely consumers would be confused or deceived as to the origin of the goods.
Capricorn Society Limited v Ignitionone, Inc. [2014] ATMO 112 (21 November 2014) IGNITION In classes 16, 35 –> TRADE MARK REMOVED FOR SOME SERVICES Application for removal for non-use (section 92(4)(b)) Ground partially established – trade mark used in relation to some of the class 35 services, but not all. Trade mark to remain on the register for the following class 35 services only: Advertising services; dissemination of advertising materials; advertising and marketing by means of newspapers, directories, magazines and other media including the Internet; provision of advertising space and advertising services, including but not limited to the provision of such services electronically, by means of computers, computer networks or the Internet.
Johnson & Johnson v Self Care Corporation Pty Ltd [2014] ATMO 111 (21 November 2014) Amendment from ALFREE to AlFREE In class 3 –> AMENDMENT ALLOWED Application for amendment of trade mark application after particulars of application have been published (section 65A). Amendment permitted – there would be no harm to the public interest no potentially conflicting marks had been filed between the application lodgement date and the amendment date.
Suzanne Malone v Stance Global Pty Ltd [2014] ATMO 115 (9 December 2014) COCONUT CULTUREIn classes 3, 25 –> REMOVAL FROM REGISTER Application for removal for non-use (section 92(4)(b)). Ground established – there was neither use of the Trade Mark by the Removal Opponent nor circumstances which were an obstacle to use. No circumstances warranting exercise of Registrar’s discretion.
Aoan International Pty Ltd [2014] ATMO 118 (12 December 2014) MH370In class 41 –> TRADE MARK REJECTED Whether the trade mark was capable of distinguishing the applicant’s goods and services (section 41). Ground established – Applicant was intending to utilise MG370 as the subject matter of documentaries and not as a sign used to distinguish the services of the Applicant from those of other traders.
The use of the trade mark would be contrary to law because contains or consists of scandalous matter (section 42). Ground not decided – Registrar reserved right to additional pursue that ground for rejection.