April 2020 – ATMO Highlights
The Opponent, Australia’s leading provider of pay tv services with over 7 million subscribers, filed evidence of a significant reputation in trade marks comprising or consisting of the letters IQ. The mark had been predominantly used as “iQ” but was also used in various formats and with various suffixes including “2”, “3” “HD” and 2Go”. All of the formats were taken into account and Section 60 was applied in the Opponent’s favour: the requisite reputation was established and use of the applicant’s QIY logo (which incorporated “iQ..” with the “i” placed in the border of the logo) would be likely to cause deception or confusion. The “caused to wonder test” adopted by Kitto J in the 1954 case Southern Cross v Toowoomba Foundry was applied. Much of the opponent’s evidence showed use of the IQ mark in conjunction with its house mark FOXTEL but the use was treated as concurrent use of two distinctive marks with a separate reputation attributed to each.
Dimension Data (Proprietary) Ltd v Dimension Digital Pty Ltd [2020] ATMO 53 (14 April 2020)
Applications for registration of the above logo and the DIMENSION DIGITAL word mark for “advertising services provided over the internet” were found to be deceptively similar to the earlier registered trade mark DIMENSION DATA registered for marketing services. Registration of both marks was refused under Section 44. The applicant argued that because DATA is wholly descriptive, it effectively had a monopoly on the word DIMENSION but while the Delegate accepted that DIMENSION is distinctive, he was “less persuaded” by this argument. How does this sit with what seems to be an increasing tendency of hearing officers to disregard the impact of non-distinctive elements in marks when assessing both substantial identity and deceptive similarity? Here, DATA and DIGITAL were conceptually very similar and this clearly swayed the Delegate’s thinking. The applicant tried to rely on honest concurrent use of its mark but did not provide an explicit statement that it was not aware of the opponent’s marks and persisted in adopting its mark in spite of them, It was noted that a search of the Register would have disclosed the Opponent’s marks. Consistently with Insight Radiology new trade marks should not be adopted unless searches for prior conflicting marks have been conducted.
Transwood Pty Ltd v Independent Cooperage Australia Pty Ltd [2020] ATMO 56 (16 April 2020)
The parties were self-represented and this was a decision on the written record. An application for registration of SCHMEIDER in respect of barrels and similar goods was refused because it was found to have been filed in bad faith. The applicant was aware of the opponent’s history of using the trade mark, particularly in light of the prior business dealings of the parties. There was also evidence that the applicant did not commence use of the SCHMEIDER trade mark until after the commencement of the opposition proceedings. The applicant’s conduct was unconscientious, unscrupulous and underhanded and fell short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.
Google LLC [2020] ATMO 62 (22 April 2020)
Following two adverse reports holding that ACTIVE EDGE was not inherently distinctive for squeezable phones, the applicant requested a hearing and won. The Delegate considered the ordinary meaning of the words and the needs of other traders to be able to use ordinary descriptive words and concluded that there are various ways to describe the goods.
Cheeky Bits Pty Ltd v Cheeky Bits for Women Pty Ltd [2020] ATMO 64 (24 April 2020)
Registrations of the word mark CHEEKY BITZ and a stylised version of it were removed on the grounds of non-use. The registered owner had not used the mark commercially but tried to rely on a number of steps preparatory to getting goods onto the market but the goods had never been offered for sale. The owner also tried to rely on the ill health of a company officer and the loss of a distributor and argued that these amounted to special circumstances sufficient for the Registrar’s discretion to be favourably exercised under Section 100(3)(c) but failed because the circumstances were personal to the owner, not to the trade as a whole.
Aktiebolaget SKF v Yan Jing Xiang [2020] ATMO 70 (30 April 2020)
Under Section 44, the applicant’s mark was found not to be deceptively similar to the earlier marks SKF and S.K.F. registered in different formats. There was no doubt that the Opponent had a “widespread, solid reputation” (its earliest registration was dated 1913), but in fact the reputation swayed the Delegate to consider that this would reduce the likelihood of confusion. Consumers “while perhaps noting an apparent attempt by the holder to mimic the Opponent’s marks, on ‘giving the matter a moment’s reflection, would readily conclude’ that the Goods bearing the trade mark were not genuine SKF parts”. The Delegate had the option of upholding the Section 60 ground of opposition even though the relevant marks were held to be not deceptively similar under Section 44 but this Decision is consistent with others at the Trade Marks Office level which allow coexistence of three letter acronyms differing by only one letter. Lack of evidence of the likelihood of deception and confusion arising from use of the applicant’s mark was a critical factor.