January 2020 – ATMO Highlights

Verge Design Ltd v Romani Clothing Co ATF the Dionyssiou Family Trust [2020] ATMO 1 (10 January 2020)

Against a background of a number of years use of each mark in Australia, the opposition to registration of VERGE GIRL was successful based on the reputation in New Zealand brand VERGE in Australia, and isolated reports of consumer confusion. Section 60 applied.

Intel Corporation a Delaware Corporation [2020] ATMO 4 (13 January 2020)

The applied for trade mark INTEL FALCON was found to be deceptively similar to the earlier registered mark FALCON. The inclusion of the well-known trade mark INTEL was not sufficient to distinguish the applied for mark. Software for drones is similar to air vehicles. Registration of INTEL FALCON was refused. 

Southcorp Brands Pty Ltd v Shanghai Benka Wines Co., Ltd [2020] ATMO 9 (29 January 2020)

Opposition to registration of a stylised version of ‘Perfumen’ was successful in view of the history of the applicant's conduct in China and Australia over a number of years, the similar stylisation of the initial letter P and the possibility of use of similar colour schemes on wine labels. Interesting discussion of what constitutes bad faith under Section 62A.

ACER Incorporated v PBX Holdings LLC [2020] ATMO 10 (29 January 2020)

The applicant was successful in establishing non-use of the PACKARD BELL registrations but the Delegate’s discretion was exercised in favour of the owner due to the residual reputation in the marks and ongoing availability of the goods in the secondary market.

Ramsay Health Care Investments Pty Limited. [2020] ATMO 11 (30 January 2020)

Application for registration of RAMSAY PHARMACY faced objections because of the alleged significance of RAMSAY both as a geographical reference and as a surname. Closer consideration of the ordinary geographical significance of RAMSAY allowed the geographical objection to be withdrawn. The surname objection was also withdrawn following consideration of evidence of use of RAMSAY formative marks both in relation to pharmacy services and closely related hospital services. Significantly the Delegate took into account use of the applied for mark in combination with a logo, despite the application being for registration of the word mark alone.

MBIP Nominees Pty Ltd as Trustee for the Mecca Brands IP Unit Trust v Meeka Pty Ltd [2020] ATMO 13 (31 January 2020)

This decision clarifies an important point of practice in relation to timing of lodgement of evidence in the opposition proceeding  In this case the Opponent chose not to file evidence in support of opposition and instead to file all its evidence at a later stage in the proceedings.  The Delegate concluded that to consider the evidence filed by the opponent would result in procedural unfairness and confirmed that the position has not been changed by the requirement to lodge a Statement of Grounds and Particulars, and "If an opponent does not file any evidence in support of its opposition there is nothing for an applicant to respond to and that opposition should not be established." This highlights the importance of filing Evidence in Support (perhaps with the exception of Section 44 grounds).

The Stralia Group Pty Ltd v Roger Alan Roberts Loose [2020] ATMO 14 (31 January 2020)

A stylised version of the trade mark ‘AweSTRALIA’ was found to be deceptively similar to the earlier registered trade mark STRALIA in view of the real and tangible danger of confusion as a result of the common element STRALIA. Given that the stylisation and colours of the applied for mark emphasised the STRALIA element, consider whether registration of AWESTRALIA in plain block letters might have been feasible.