ATMOsphere – Trade Marks Office Decisions – March 2014

In January this year, we started a new series of posts from IP Whiteboard: ATMOsphere, aiming to keep our readers up-to-date on what has been happening in the world of Trade Marks Office decisions (see the January ATMOsphere post here). As explained there, our aim is both to provide a very high level summary of those decisions, to provide an interesting and useful snapshot of the previous two months of decisions.

So what has been happening in January and February 2014?

PROCEEDINGS FOR OPPOSITION TO THE REGISTRATION OF A TRADE MARK

Case Trade Mark Ground(s) of opposition Decision of TMO
Unilever Plc v XADO-Holding Ltd [2014] ATMO 1 (8 January 2014) DOMOin class 3International Registration Designating Australia (“IRDA”) protection request –> EXTENSION OF INTERNATIONAL REGISTRATION ACCEPTED The trade mark was substantially identical or deceptively similar to OMO, OMO HIGH PERFORMANCE, OMO ONE STEP, DOMESTOS, DOMESTOS GERM GUARD (various classes including 3) (s 44). Ground not established – not substantially identical or deceptively similar to the marks.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the marks OMO and DOMESTOS (s 60). Ground not established – the use of the mark was not likely to deceive and cause confusion
The use of the trade mark would be contrary to law because its use would be misleading and deceptive (s 42(b)). Ground not established – not likely to mislead or deceive consumers.
FetchTV Pty Ltd v LemonStone Group Pty Ltd [2014] ATMO 2 (10 January 2014) and FETCH SEARCH SOLUTIONS in class 42. –> REGISTRATION REFUSED The trade mark was substantially identical or deceptively similar to FETCH and FETCHTV, (classes 9, 38 and 41) (s 44). Ground established – the services were services of the same description and goods closely related to the services. FETCH SEARCH SOLUTIONS was substantially identical and deceptively similar to FETCH and FETCHTV. FETCH A NATURAL RESOURCE was deceptively similar but not substantially identical.
Société des Produits Nestlé S.A. v Jason Marks [2014] ATMO 3 (10 January 2014) INSPERESSO in classes 11, 30, 35, 37, 39 and 43 –> REGISTRATION REFUSED The use of the trade mark would likely deceive and cause confusion because of the reputation of the mark NESPRESSO (s 60). Ground established – the use of the mark was likely to deceive and cause confusion given the significant reputation of NESPRESSO and the degree of similarity
Roger Maier v Asos Plc [2014] ATMO 7 (28 January 2014) ASOS in class 3, 18, 25 and 25 –> AMENDED REGISTRATION MAY BE ACCEPTED (some goods and services refused) The use of the trade mark would likely deceive and cause confusion because of the reputation of the mark ASSOS (s 60). Ground not established – requisite reputation of ASSOS not established
The trade mark was substantially identical or deceptively similar to ASSOS, (class 25) (s 44). Ground partially established – ASOS was deceptively similar to ASSOS and some of the goods were similar. There was continual use of ASOS (under s 44(4)), however the use of ASSOS was earlier continuous use (s 58A) in respect of some goods and services.
Unilever Australia Limited/and jointly by Unlilever Australia Limited and Unilever plc. v The Procter and Gamble Company [2014] ATMO 8 (29 January 2014) PODS in class 3 and in classes 3 and 11 –> TO PROCEED TO REGISTRATION The trade marks were not capable of distinguishing the applicant’s goods and services (s 41) Ground not established in relation to either trade mark as PODS and POWER PODS had the requisite degree of inherent distinctiveness in relation to the goods and services claimed. The stylised “o” element in the stylised mark was arguably prima facie acceptable in its own right for the goods and the word mark was not used in a descriptive manner for the goods.
The applicant did not intend to use or authorise the use of the marks as trade marks in Australia (s 59). Ground not established – lack of intention to use cannot be inferred from lack of use per se, and there was no other evidence of lack of intention to use the mark.
OMS Investments Inc. v DuluxGroup Australia) Pty Ltd [2014] ATMO 9 (31 January 2014) WEED ‘N’ FEED in classes 1 and 5 –> REGISTRATION REFUSED The trade mark was not capable of distinguishing the applicant’s goods and services (s 41). Ground established – the trade mark was not to any extent inherently adapted to distinguish the goods. “Weed and feed” and its colloquial equivalent “weed ‘n’ feed” were ordinary ways of indicating the nature of the goods. The evidence of use did not show that it did distinguish the applicant’s goods.
Radio Systems Corp v Sustainable Agriculture and Food Enterprises Pty Ltd [2014] ATMO 12 (13 February 2014) in class 31 –> REGISTRATION REFUSED The applicant’s trade mark was likely to deceive or cause confusion due to reputation of opponent’s mark PETSAFE (in classes 6, 9 and 19) (s 60). Ground established – given the reputation of PETSAFE and since the two marks were substantially identical, consumers would at least entertain a reasonable doubt as to some sort of connection between the two marks.
Carboline International Corporation v Multitex Corporation Pty Ltd [2014] ATMO 13 (14 February 2014) in classes 17 and 19 –> AMENDED REGISTRATION MAY BE ACCEPTED (class 17 refused) The trade mark was substantially identical or deceptively similar to POLYCLAD (s 44) in class 2. Ground established – the marks were at least deceptively similar and the purpose and trade channels of the relevant goods would likely be the same in respect of the goods in class 17.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the mark POLYCLAD (s 60) in class 2. Ground not established – the opponent could not demonstrate sufficient market recognition and reputation in Australia for POLYCLAD.
The use of the trade mark would be contrary to law as its use would be misleading and deceptive under the Australian Consumer Law (s 42(b)). Ground not established – there was no evidence to support any breach of consumer protection law or any likelihood of deception, confusion or misrepresentation.
Bentley Worldwide Shoes Limited v Transport For London [2014] ATMO 17 (26 February 2014) in classes 16 and 25 –> TO PROCEED TO REGISTRATION The trade mark was substantially identical or deceptively similar to UNDERGROUND, (classes 9 and 14) (s 44). Ground not established. Whilst the Trade Mark and UNDERGROUND were deceptively similar, the goods and services were sufficiently different in nature, use and trade channels such that there was no tangible danger of deception or confusion occurring.
The applicant is not the owner of the trade mark (s 58). Ground not established. There was no total impression of similarity between the trade mark and the logo that had been used by the Opponent:The word UNDERGROUND was positioned and used differently in the Opponent’s and Applicant’s logo marks.
The use of the trade mark would likely deceive and cause confusion because of the reputation of the mark UNDERGROUND (s 60). Ground not established – the Opponent could not demonstrate a sufficient reputation in UNDERGROUND.
Gregory Paul Roebuck v News Limited [2014] ATMO 19 (27 February 2014) CARSGUIDE in classes 9, 16, 35, 36, 38 and 41 –> TO PROCEED TO REGISTRATION The trade mark was not capable of distinguishing the applicant’s goods or services (s 41) Ground not established – the mark CARSGUIDE had some degree of inherent capability to distinguish and the applicant demonstrated use over a period of 20 years and in a variety of fonts, borders and stylisations. Held to be capable of distinguishing in respect of all of the goods and services claimed.
Universal International Music BV v Island Company LLC [2014] ATMO 18 (28 February 2014) ISLAND COMPANY in class 25 –> TO PROCEED TO REGISTRATION The applicant was not the owner of the trade mark (s 27(1)(a));The applicant did not intend to use or authorise use of the trade mark (s 27(1)(b));The trade mark was not capable of distinguishing (s 41);The use of the trade mark would be contrary to law (s 42(b));The use of the trade mark was likely to deceive and cause confusion (s 43); andThe trade mark was similar to a mark that had acquired a reputation in Australia (s 60). Ground not established – the opponent did not file any evidence in respect of various grounds of opposition.

OTHER PROCEEDINGS

Case Trade Mark Proceeding Outcome
Dimitri V. Chiotelis and Evangelos E. Chiotelis v TAP Worldwide LLC [2014] ATMO 4 (14 January 2014) in class 12 –> REMOVED FROM REGISTER An application for removal for non-use of the mark was made under s 92(4)(b). Trade mark removed from register. No use and no authorised use was shown of the mark in the relevant period.
The Procter & Gamble Company [2014] ATMO 5 (17 January 2014) SWEEPER+ VAC in class 21 –> REGISTRATION REFUSED for particular goods claimed; Applicant granted 21 days to request amendment Whether registration should be refused on the basis that the trade mark was not distinguishing of the goods or services (s 41). The Trade mark was not capable of distinguishing with regards to particular goods claimed in class 21. No evidence of use or intended use.
National Health Call Centre Network Ltd [2014] ATMO 6 (28 January 2014) NATIONAL HEALTH SERVICES DIRECTORY in classes 9, 16, 41, 42 and 44 –> REGISTRATION REFUSED Whether registration should be refused on the basis that the trade mark was not distinguishing of the goods or services (s 41). The trade mark was to some extent inherently adapted to distinguish the goods and services. While there was some use, the use was confined, descriptive or accompanied by a device
Western Australian Land Authority [2014] ATMO 10 (31 January 2014) in classes 16, 35, 36 and 37 –> AMENDED REGISTRATION MAY BE ACCEPTED (some goods and services refused) Whether the trade mark was substantially identical or deceptively similar to THE JETTY (in class 6) and “the jetty” (in class 43) (s 44). Trade mark application rejected – despite stylisation in the logo, the applicant’s mark was deceptively similar and involved similar goods and services to THE JETTY and “the jetty” marks. However, application could proceed to registration if certain claimed services in class 36 were deleted from application.
Bioengineering AG [2014] ATMO 14 (21 February 2014) in classes 6, 7 and 9 –International Registration Designating Australia (“IRDA”) protection request –> EXTENSION OF INTERNATIONAL REGISTRATION REJECTED Whether an IDRA should be refused on the basis that it was not capable of distinguishing the specified goods or services (s 41) Application for protection in Australia of the IRDA refused – while the stylisation gave it a degree of inherent adaptation to distinguish, other traders would desire to use a mark nearly resembling the trade mark. The applicant provided no evidence of use.
Century 21 Real Estate LLC [2014] ATMO 15 (26 February 2014) SMARTER. BOLDER. FASTER in class 36 –> REGISTRATION REFUSED Whether registration should be refused on the basis that the trade mark was not distinguishing of the goods or services (s 41). Application for registration of trade mark refused – the trade mark was not such that it could acquire distinctiveness and be taken as capable of distinguishing the Applicant’s services. The Applicant failed to establish actual use of the mark to show that it did in fact distinguish the designated services from those of others.
Dick Smith Investments Pty Ltd v Roger John Ramsey [2014] ATMO 16 (26 February 2014) OZEMITE in classes 29 and 30 –> REMOVED FROM REGISTER Opposition to application for removal of trade mark for non-use under s 92(4)(b) Application for removal successful. The trade mark owner did not demonstrate actual use of the trade mark during the relevant period. There was no obstacle sufficient to resist a non-use action under s 110(3)(c). The non-use was attributable to a voluntary act of the trade mark owner rather than an external event (eg lack of availability of a product or ingredient).
Combined Group of Companies Pty Ltd v Reln Pty Ltd [2014] ATMO 20 (28 February 2014) RAINMATE in class 11 –> MODIFIED REGISTRATION MAINTAINED Opposition to application for removal of trade mark for non-use under s 92(4)(b) Application for removal partially successful.

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The trade mark owner was able to show use of trade mark only in relation to “plastic water tanks”, which should have been registered in class 20. The trade mark was removed from the Register except in for “plastic water tanks” and the registration was amended to class 20.

By Emily Rich and Anna Spies