ATMOsphere – Trade Marks Office Decisions – January to March 2015

ATMOsphere: Our trade mark series of posts summarising what has been happening in the world of Trade Marks Office decisions. Here, we aim to provide a high level summary of those decisions and to provide an interesting and useful snapshot of the previous months of decisions.

Better a little late than never, we bring you the summary of decisions from January to March 2015 (with the assistance of Anna Spies, Tim Craven, Andrew Arulanandam and Emily Rich).

PROCEEDINGS FOR OPPOSITION TO THE REGISTRATION OF A TRADE MARK

 

Case Trade Mark Ground(s) of opposition Decision of TMO
JANUARY 2015 
Kimberley-Clark Worldwide Inc. v The Reject Shop Limited [2015] ATMO 2 (8 January 2015) In class 3 –> APPLICATION REFUSED  The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s registered trade mark KLEENEX in Australia (section 60). Ground established – confusion was said to be “inevitable” because opponent’s reputation was in the consumer goods space and the word KLEENZ bears a significant visual resemblance to the opponent’s trade mark. The fact that the opponent’s use of its trade mark was very frequently in a cursive font and accompanied by a stylized logo did not mean that its reputation in the word KLEENEX was limited to this kind of use.
ParexGroup Pty Ltd v Mapei S.P.A. [2015] ATMO 3 (9 January 2015) ULTRAFLEX In class 1 –> International Registration Designating Australia (“IRDA”) protection request –> EXTENSION OF PROTECTION TO AUSTRALIA REFUSED The applicant was not the owner of the trade mark (section 58). Ground established – the Opponent (or its predecessor in title) was the first user of the trade mark in Australia. All of the goods described by the IRDA registration were the same goods upon which the opponent had used the trade mark in Australia.
The use of the trade mark would be likely to deceive or cause confusion because the opponent’s registered trade mark ULTRAFLEX had acquired a reputation in Australia before the priority date of the applied for mark (section 60). Ground established – the evidence showed that the opponent had sold goods bearing the trade mark through various and often large hardware stores and tile businesses in Australia. As a result, the opponent had a reputation in the trade mark before the priority date of the application. Were the applicant to use the trade mark in Australia there would be a real and tangible likelihood of confusion.
Sazerac Company, Inc. v Liquid Exchange Pty Ltd [2015] ATMO 4 (20 January 2015) BUFFALO BILL In class 33 –> APPLICATION TO PROCEED TO REGISTRATION The use of the trade mark would be likely to deceive or cause confusion because it was deceptively similar to the opponent’s trade mark BUFFALO TRACE (section 44). Ground not established – the trade mark applied for and the opponent’s registered trade mark were not deceptively similar but “visually, aurally and conceptually” quite distinct. The word “buffalo” was not the single, important element of the trade marks and they did not have identical rhythm and cadence.
The use of the trade mark would be likely to deceive or cause confusion because the opponent’s trade mark BUFFALO TRACE had acquired a reputation in Australia (section 60). Ground not established – notwithstanding longevity of use and reputation in the United States, the opponent’s trade mark had a modest reputation in Australia and the two trade marks were sufficiently dissimilar that it was unlikely that the Australian public would be deceived by the applicant’s trade mark.
The use of the applicant’s trade mark would be contrary to law (namely, sections 18 and 29 of the Australian Consumer Law) (section 42(b)). Ground not established – for the reasons above there was no evidence that use of the applicant’s trade mark would contravene the Australian Consumer Law.
The applicant did not intend to use the trade mark (section 59). Ground not established – there was not sufficient evidence to support the opponent’s argument that the applicant was in the habit of applying to register the trade marks of others but not actively use those trade marks itself.
Tod’s S.p.A. v Jiang & Hou Pty Ltd. [2015] ATMO 5 (21 January 2015) VANESSA HOGAN In classes 18 and 25 –> REGISTRATION REFUSED 

 

The use of the trade marks would be likely to deceive or cause confusion because the opponent has acquired a reputation in Australia for various stylised HOGAN trade marks (section 60) Ground established – given the reputation evidenced by the opponent in its HOGAN trade marks, a significant number of Australian consumers would have, at the very least, subscribed to a reasonable doubt as to some sort of connection between those well-known trade marks and the applicant’s VANESSA HOGAN trade marks.
Jiang & Hou Pty Ltd. & Gervasi Nominees Pty Ltd v Winmart Pty Ltd [2015] ATMO 6 (29 January 2015) GERVASI In class 35 –> APPLICATION TO PROCEED TO REGISTRATION The applicant was not the owner of the GERVASI trade mark (section 58). Ground not established – upon the sale of the opponent’s business to the applicant, the applicant became entitled to use the trade mark. Moreover, there was not enough evidence to establish that the applicant was not the owner of the trade mark.
The use of the trade marks would be likely to deceive or cause confusion because the opponent has acquired a reputation in GERBASI the trade marks (section 60) Ground not established – there was very little evidence establishing a strong reputation in the opponent’s trade mark and business
The use of the applicant’s trade mark would be contrary to law (namely, sections 18 and 29 of the Australian Consumer Law) (section 42(b)). Ground not established – as explored above, the trade mark was not likely to deceive or mislead, or amount to a false representation
The opponents and their use of the GERVASI trade mark on supermarket services are so well known in the Australian marketplace that any use of the GERVASI name on supermarket services would necessarily imply “an implication of sponsorship or association” with the opponents (section 43). Ground not established – The average customer in a supermarket is not likely to have been deceived or confused or caused to wonder about the existence of any formal or commercial relationship between the applicant and the opponents due to the use of the trade mark.
The application was made in bad faith (section 62A). Ground not established – the opponent did not discharge their onus of proof.
AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2015] ATMO 7 (29 January 2015)  SMART In class 5 –> REGISTRATION REFUSED  The opponent’s continuous use of its trade mark predated the applicant’s use of its trade mark and the applicant’s mark is substantially identical or deceptively similar to the opponent’s trade mark (section 58A). Ground established – the opponent established continuous use of its deceptively similar trade mark ‘SMART 450’ on similar goods to the Class 5 goods subject of the applicant’s application.
FEBRUARY 2015 
SMA Solar Technology AG v Sunny Sign Company Pty Ltd [2015] ATMO 9 (2 February 2015) In class 6, 9, 19, 35, 37, 40 –> APPLICATION TO PROCEED TO REGISTRATION 

 

The use of the applicant’s trade mark would be contrary to law (namely, sections 18 of the Australian Consumer Law and the tort of passing off)(section 42(b) Ground not established – the opponent did not discharge their onus.
The use of the trade mark would be likely to deceive or cause confusion because it was deceptively similar to the opponent’s family of SUNNY marks (section 44) Ground not established – the use of SUNNY SIGNS for goods in class 9 would not result in a tangible danger of confusion or deception in relation to the SUNNY marks when the marks are considered in their entirety because the ‘dominant feature’ of the applicants mark was the device element. Moreover, the markets for road traffic signage and photovoltaic technology are different markets.
The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s family of SUNNY marks (section 60 ) Ground not established – The use of SUNNY SIGNS would not be likely to deceive or cause confusion. Both parties are in highly specialised industries involving expensive goods. The relevant consumer will be discerning and knowledgeable, noting the differences between the marks, in particular the inclusion of a device.
CERAMICHE CAESAR S.p.A. v CaesarStone Sdot-Yam [2015] ATMO 12 (4 February 2015) CAESARSTONE In class 19–>TRADE MARK REFUSED REGISTRATION

In classes 19, 20, 35 and 37–> REGISATION REFUSED

The use of the trade mark would be likely to deceive or cause confusion because it was deceptively similar to the opponent’s trade mark (section 44)  Ground established – Tiles and floor panels or covering were deemed goods of the same description in light of their substitutability. This was not resolved by the addition of words like “none of the foregoing being in the nature of tiles.” The likelihood of confusion or deception was very high as the distinctive feature of the applied-for mark was the non-descriptive CAESAR prefix, that STONE was a descriptive word and the idea behind the marks was conceptually the same (Roman connotations).
Henkel AG & Co. KGaA. [2015] ATMO 13 (4 February 2015) SHAPE MARKS: 4 BALLS IN CONTAINER WITH HOOK DEVICE (4 Different colour combinations)In classes 3, 5, 21 –> ACCEPTANCE REVOKED The mark is not inherently adapted to distinguish the goods (Section 41) Ground established – It was reasonable in all of the circumstances to revoke acceptance of the mark because they were not inherently adapted to distinguish the applied-for goods. The marks were found to be highly functional and not concocted or ambiguous, being the shape of toilet sanitisers and thus inextricably bound together with the goods they were intended to identify.
Goodyear Tire & Rubber Compan v Dunlop Aircraft Tyres [2015] ATMO 14 (5 February 2015) DUNLOP and In class 12 and 37 –> REGISATION REFUSED

 

The use of the trade mark would be likely to deceive or cause confusion because it was deceptively similar to the opponent’s various DUNLOP word and device marks including (Section 44)  Ground established – The marks were identical. The parties had a long history of relationship. While the hearing officer had some sympathy for the applicant, the hearing officer did not exercise its discretion to register the mark under section 44(3). Affixing the trade mark to tyres in 1987 did not trump the long term ownership of the trade marks.
The applicant was not the owner of the trade mark (section 58). Ground established – The Opponent used the marks in Australia prior to the applicant. Dunlop Pneumatic Tyre Company, the Opponent’s predecessor existed in Australia prior to 1905 and its Australian entities have held statutory rights to the DUNLOP word mark since 1910 and the Flying D device since 1965.
Australian College of Natural Medicine Pty Ltd [2015] ATMO 15 (9 February 2015) WELLNATION CLINICS and WELLNATION In class 3, 5, 16, 35, 41, 44 –> APPLICATION TO PROCEED TO REGISTRATION The marks are not inherently adapted to distinguish the goods(Section 41) Ground not established – the word WELLNATION is a contrived term lacking a direct meaning and therefore other traders would not desire to use the same marks in connection with their own similar goods or services.
Jonglea Pty Ltd v Pharaoh Partners pty Ltd [2015] ATMO 16 (12 February 2015) In Class 14 –> REGISTRAION REFUSED The opponent’s continuous use of a similar trade mark predated the applicant’s use of its trade mark (section 58A). 

 

 

Ground established – the Opponents evidence (income and advertising figures, product examples showing use on similar goods) clearly showed a continuous use of their trade mark predating the applicants.
Chernae Noonan v Benefit Cosmetics LLC [2015] ATMO 17 (18 February 2015) BENEFIT BROWBAR and In Class 44 –> REGISTRAION REFUSED 

 

The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s trade mark THE BROW BAR (section 60) Ground established – The addition of BENEFIT did not differentiate the marks to such an extent that confusion or deception is unlikely. Most third party usage of “brow bar” occurred after the filing date.
Hunter Property Holdings Pty Ltd v Knott Investments Pty Ltd [2015] ATMO 20 (23 February 2015) and AVIDA in class 12, 37 –> APPLICATION TO PROCEED TO REGISTRATION The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s registered trade mark in Australia(section 60)  Ground not established – The Opponent had not demonstrated trade mark a sufficient reputation in its ‘VIDA’ “as a matter of fact.” There was little evidence of customer appreciation of the Opponent’s brand as opposed to the products themselves and there was insufficient sales and advertising from which a reputation may be inferred.
Yantai Jereh Oldfield Services Group Co Ltd v Pioneer Petroleum Technology Development Company Limited [2015] ATMO 22 (26 February 2015) In Class 5 –> REGISTRATION REFUSED The applicant is not the owner of the trade mark (Section 58) Ground established – The opponent and not the applicant were the owner of the mark in respect of the claimed goods. There was no evidence that the Applicant had ever used the mark for any goods or services, and the evidence suggested that the opponent used the mark and the word mark in class 7 for goods the same as those in the claimed goods prior to the priority date. 

 

Watches of Switzerland Pty Ltd v Mappin & Webb Limited [2015] ATMO 23 (27 February 2015) In class 14, 35 –> APPLICATION TO PROCEED TO REGISTRATION The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s WATCHES OF SWITZERLAND mark in Australia(section 60) Ground not established – The opponent confused what might be distinctive form what is clearly descriptive. The delegate could not find a distinctive reputation in purely descriptive words. Additionally, the graphic elements of the applicants mark were not inconsequential compared to the word elements. The likelihood of confusion or deception was therefore low or otherwise merely the result of both parties using common descriptive words in their respective marks.
The use of the applicant’s trade mark would be contrary to law (namely, sections 18 and 29 of the Australian Consumer Law) (section 42(b)). Ground not established – Since the Opponent did not establish that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would “mislead or deceive” under the ACL which is a higher standard.
The applicant was not the owner of the trade mark (section 58). Ground not established – the evidence did not show use of the words “watches of Switzerland” separate from the WOS mark. In addition ‘watches of Switzerland’ is not a trade of an ‘appropriate type’ in the context of the claimed goods.
The application was filed without an intention to use the trade mark(Section 59)  Ground not established – The opponent failed to meet the onus because its only argument was that the applicants evidence was silent as to any planned use of the trade mark.
MARCH 2015
ASEP Healthcare Ltd v Multigate Medical Products Pty Ltd [2015] ATMO 24 (3 March 2015) In Class 10 –> APPLICATION TO PROCEED TO REGISTRATION The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s TOURNSTRIP mark in Australia(section 60) 

 

Ground not established – The potential marketplace for the goods was considerable, as such the slight presence and short duration of the goods bearing the mark in the marketplace indicate that the mark did not have a reputation in Australia at the priority date.
The use of the applicant’s trade mark would be contrary to law (namely, sections 18 and 29 of the Australian Consumer Law and the common law tort of passing off) (section 42(b)). Ground not established – Since the opponent had not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither could it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent).
The applicant was not the owner of the trade mark (section 58). Ground not established – the opponents argument that it had first use of the mark on the basis of using TOURNISTRIP failed as the marks were considered not to be substantially identical on the basis that TOURNI prefix was plainly descriptive and thus not the essential feature of either mark. Additionally, the bi-coloured lozenge device contributed to the identity of the applied-for mark.
The application was made in bad faith (section 62A). Ground not established – The evidence did not, on balance, establish bad faith because the distribution agreement between the parties ended prior to the application for the mark. Although it could be interpreted that the applicant opportunistically waited until the agreement had expired and patent application lapsed until it sought registration, evidence that the applicant tried to persuade the opponent to drop their prices or allow it to arrange for offshore manufacture of the goods suggest normal business practice
CISCO Technology Inc v Commonwealth Scientific and Industrial Research Organisation [2015] ATMO 26 (13 March 2015) In classes 9, 16, 38, 41 and 42 –> APPLICATION ALLOWED TO PROCEED TO REGISTRATION The use of the trade mark would be likely to deceive or cause confusion because it was deceptively similar to the opponent’s trade mark (section 44)  Ground not established – There was no significant likelihood of confusion as both marks were composed of elements unlikely to be mistaken for each other. Additionally, extensive evidence of the notoriety of CSIRO and the abstract map of Australia would be instantly recognisable by the relatively sophisticated consumer base for the relevant goods and services.
The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s registered trade mark in Australia (section 60)  Ground not established –While the Opponent had established the reputation of its logo mark, it had not, for the same reasons under section 44, established that use of the CSIRO’s mark would be likely to deceive or confuse when used in relation to the goods and services. While there was an abstract resemblance between the trade marks in question, this resemblance would not, in approach that where, because of the combined effects of the reputation and similarity, the use of the Trade Mark would be likely to deceive or cause confusion. 
The use of the applicant’s trade mark would be contrary to law (namely, sections 18 and 29 of the Australian Consumer Law and the common law tort of passing off) (section 42(b)). Ground not established – As the opponent had not established that the use of the mark would be likely to deceive or cause confusion in terms of section 60, it followed that neither could it establish misleading or deceptive conduct under the higher standard.
Self Care Corporation Pty Ltd v Johnson & Johnson [2015] ATMO 27 (24 March 2015) ALLERFREE In class 3 –> APPLICATION TO PROCEED TO REGISTRATION The mark is not inherently adapted to distinguish the goods(section 41) Ground not established – there was no evidence that any person was using, or understood, “allerfree” as a normal descriptive term with any particular, known meaning. Registration would not prevent others from using any, ordinary, descriptive terms indicating the claimed benefits of particular goods for allergy sufferers.
The trade mark is scandalous(section 42(a)) Ground not established – there was no suggestion that the mark contained or consisted of ‘scandalous matter’
The trade mark is likely to deceive or cause confusion because of some connotation contained in the mark(section 43) Ground not established – the provision is directed at connotations inherent in the mark itself and not due to similarities with other marks, therefore the opponents argument was misconceived.
The use of the trade mark would be likely to deceive or cause confusion because it was deceptively similar to the opponent’s trade mark AIRFREE (section 44) Ground not established – there was no real likelihood that a significant number of ordinary consumers would wonder, or be left in doubt about, whether the parties’ goods came from the same source.
The applicant was not the owner of the trade mark(section 58) Ground not established – there was no evidence that a party other than the applicant used the mark itself in Australia.
The application was filed without an intention to use the trade mark(section 59) Ground not established – the opponent was misconceived in their belief that merely nominating the ground without any evidence to support an allegation would shift the onus onto the applicant.
The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s registered trade mark in Australia(section 60)  Ground not established – the opponent failed to nominate a mark which had acquired a reputation. 
Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd [2015] ATMO 28 (31 March 2015) In Class 43 –> APPLICATION TO PROCEED TO REGISTRATION The mark is not inherently adapted to distinguish the goods(section 41) Ground not established – the dominant feature of the Trade Mark was a device, entirely figurative in nature which no other trader should honestly need to use in respect of the Services
The use of the trade mark would be likely to deceive or cause confusion because it was deceptively similar to the opponent’s trade mark (section 44)  Ground not established –Any confusion that might have occurred stemmed only from the prominence of the descriptive term ‘homestay network’ in the Opponent’s trade mark and not from a deceptive similarity of the parties’ marks.
The applicant was not the owner of the trade mark (section 58). Ground not established – The trade marks were neither substantially identical nor deceptively similar, and even if so the evidence showed that the applicant had first used the mark.
The use of the trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s registered trade mark in Australia(section 60)

 

Ground not established – The opponent did not provide evidence that it had a reputation in the expression ‘Homestay Network’ alone, the only common element of the marks under consideration and lacking inherent adaptation to distinguish the marks.
The application was made in bad faith (section 62A). Ground not established – the opponent had not provided evidence which went to the ground and merely alleged that the applicant had acted in bad faith while pointing to what it claimed to be their better business methods and approvals from various bodies.
Affinity Tool Works LLC v Peter Hosking [2015] ATMO 29 (31 March 2015) PORTAMATE In Class 8 –> REGISTRATION REFUSED The applicant was not the owner of the trade mark (section 58). Ground established – The Opponent established that its predecessor in title, HTC, had actually used, rather than merely made preparations to use, the substantially identical mark PORT A MATE in respect of stands and mobile bases for power tools and work benches in Australia from 2003.

 

 

 

 

OTHER PROCEEDINGS

 

Case Trade Mark Proceeding Outcome
Monster Energy Company v USA Nutraceuticals Group, Inc [2015] ATMO 1 (9 January 2015) BEAST In class 5 –> International Registration Designating Australia (“IRDA”) protection request à EXTENSION OF TIME TO FILE EVIDENCE IN ANSWER REFUSED Request for extension of time to file evidence in answer under reg 5.15 of the Trade Mark Regulations 1995 Application refused – there were no exceptional circumstances to justify extending the period in which the applicant for registration could file evidence in reply. The Hearing Officer was not satisfied that the holder had acted promptly and diligently during the relevant period.
Caprice Australia Pty Ltd v MG Icon LLC [2015] ATMO 8 (2 February 2015) MATERIAL GIRL in class 25 –> TRADE MARK TO REMAIN ON REGISTER Application for removal for non-use (92(4)(a) and (b)). Ground not established – the opponent rebutted the allegation of non-use by showing that there was authorised use of the mark in good faith during the three year period. There were sales of MATERIAL GIRL branded clothing during the relevant period, evidenced by tax invoices and receipts.
Courier Luggage Pty Ltd v Wenger SA Inc [2015] ATMO 10 (3 February 2015) In Class 18 –> TRADE MARK TO REMAIN ON REGISTER Application for removal for non-use (section 92(4)(a) and (b)) Ground not established – the opponent rebutted the allegation of non-use by showing that there was authorised use of the mark in good faith. The versions of the trade mark that had been used contained those essential elements; the use of different fonts, positioning or added flourishes did not affect the identity of the trade mark.
Light Path Innovation Pty Ltd v G8 Pty Ltd [2015] ATMO 11 (4 February 2015) LE GEAR In classes 9, 18, 25 and 35 –> PERMISSION TO FILE FURTHER EVIDENCE GRANTED Application for permission to extend the period for serving and filing evidence in regards to opposition proceedings(Regulation 5.15 Trade Mark Regulations 1995) Extension granted allowed – Even though evidence the evidence was likely to be relevant given the opponent’s submission that if permission is granted than they should be afforded the opportunity to serve its own further evidence in response. The evidence was credible and was of such substantive weight that an appeal could be necessary. Although the need to serve the evidence was a result of misunderstanding of procedure, on balance, it was appropriate for the extension to be granted.
Schneider Electric (Australia) Pty Ltd v Arlec Australia Pty Ltd (as Trustee for the Arlec Unit Trust) [2015] ATMO 18 (19 February 2015) (3-D Shape of an electrical switch dolly)In class 9 –> TRADE MARK TO REMAIN ON REGISTER 

 

Application for removal for non-use (section 92(4)(a) and (b)) Ground not established –the opponent had used the trade mark in good faith. The examples provided constitute conclusive proof of a real, as opposed to token, use in a commercial sense. This included evidence of use clearly intended to draw attention to the fact that the switch shape is a registered trade mark (invoices and corresponding images, advertisements, use of a trade mark claimer)
Rudducks Pty Ltd v Tangerine Holdings Ltd [2015] ATMO 19 (20 February 2015) VETZPLUS In class 3, 5 –> TRADE MARK REMOVED FROM THE REGISTER Application for removal for non-use (section 92(4)(a) and (b)) Ground established – the allegation of non-use was not rebutted. The opponent failed to provide any examples of use of its Mark in the relevant period or indeed since it applied for registration. It had undertaken preparations in order to sell goods under the mark including developing the product packaging but there was no evidence that the goods so packaged were offered for sale to the retailers which constitute the opponent’s customers.
Shine Beauty Pty Ltd v Shine Ltd [2015] ATMO 21 (23 February 2015) SHINE In Class 41 –> TRADE MARK REMOVED FROM THE REGISTER Application for removal for non-use (section 92(4)(a) and (b)) Ground established – No use in respect of any of the services specified was established during the relevant period, evidence of a health and nutrition course was not ‘overwhelming convincing proof’, being only a single activity, incidental to the opponents beauty services.
Apple Inc [2015] ATMO 25 (12 March 2015) In Class 9 –> EXTENSION OF PROTECTION GRANTED The mark is not inherently adapted to distinguish the goods(Section 41) Ground not established – The simplicity of a trade mark does not prevent it from being distinctive, nor was there a reason why the use of an indication of where to place electronic connections (the correct orientation of the plug vis a vis a socket) in the mark would be used by other traders without improper motive.Even so, the trade mark was capable of distinguishing Apple’s goods on the basis of substantial sales of the plug with their goods and as an after-market accessory, indicating extensive use such that a good proportion of the relevant public identified it with their goods.