May 2020 – ATMO Highlights
A Class 9 application for registration of INTEY was found to be deceptively similar to the above registered stylised mark for closely related goods in that class and registration was refused on this basis. Neither party filed evidence, requested a Hearing or filed submissions but the opposition was successful.
An application for registration of MUMUSO was found to have been made in bad faith, in the light of the Opponent’s use of the above stylised version of the mark internationally. In reaching the decision the Delegate stated, “the application to register, in Australia, a trade mark which is almost identical to one which is in use by a competitor in a number of foreign jurisdictions is, prima facie, an application made in bad faith. This appears, on the face of it, to be an attempt to frustrate a competitor’s expansion into Australia in a manner which is likely to be considered as unscrupulous, underhand or unconscientious by persons adopting proper standards.” Registration was refused. An interesting case decided on the bad faith ground of opposition alone. Neither party requested a Hearing and only the applicant filed written submissions (which failed to address how it had come to adopt the trade mark and/or why it chose to register in the face of the Opponent’s trade mark and its overseas use).
Warrior Sports Inc v Warrior Australia Pty Ltd [2020] ATMO 75 (5 May 2020)
Warrior Australia Pty Ltd had a history of use and registration of WARRIOR for mixed martial arts clothing and accessories. It was refused registration for WARRIOR in respect of goods and services similar or closely related to the goods for which it used its mark because it was inferred that it did not have an intention to use the WARRIOR trade mark for the broader goods. It is relatively unusual for an opposition to succeed based on s.59 (absence of an intention to use). There is a presumption that an applicant has the requisite intention but once put on notice that this is at issue, failing to rebut the ground by filing evidence of intention to use is fatal. A useful case for understanding the scope of s.59 and a reminder that claiming unduly broad specifications of goods and services can create vulnerabilities which may need to be addressed later.
Transwoods Pty Ltd v Acquire Investment Pty Ltd [2020] ATMO 76 (6 May 2020)
An application for registration of SCHMEIDER in respect of alcohol in class 33 was found to have been filed in bad faith. There was evidence of the Applicant’s awareness of the Opponent’s history of use of the SCHMEIDER trade mark in respect of its cooperage business, particularly in the light of prior business dealings. A sufficient relationship was found between barrels and wine barrels and the applicant’s conduct was held to be unconscious, unscrupulous and underhanded, falling short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’. Registration was refused. The decision was consistent with the Registrar’s earlier decision on an application for SCHMEIDER in Class 20 (see TM-Logic April 2020 ATMO Highlights) but this time around, the Opponent was represented.
Wilsford Wines Pty Ltd v [2020] ATMO 77 (7 May 2020)
Wilsford Wines Pty Ltd was the registered owner of WILSFORD for “Wines, spirits, liqueurs” and following an application for removal of the registration, provided evidence of use of its trade mark for wines and fortified wines and the sale and promotion of wine and evidence that the mark was recognised for wines. The Delegate noted the Registrar’s discretion to allow the registration to remain undisturbed but decided that it would be appropriate to restrict the registration to “Wines” because the owner was a winemaker and had never made spirits or liqueurs.
Miyakoshi Printing Machinery Co Ltd [2020] ATMO 79 (12 May 2020)
During examination of an application for registration of MLP in respect of “printing machines” the Examiner took a firm view that MLP is an acronym for a particular kind of printer and objected to acceptance. The Delegate decided that the evidence of use of MLP by third parties was not enough to show that MLP has “any ordinary signification to any significant number of persons who will purchase, consume or trade in those goods". The distinctiveness objection was withdrawn on this basis. A good example of a successful ex parte Hearing prompted by an ill-founded decision at the examination level.
Thrive Collective Pty Ltd v the Ausray Group Pty Ltd [2020] ATMO 81 (13 May 2020)
A Class 5 application for registration of KIDS THRIVE for “Nutritional, dietary and protein supplements not being delivered through topical patches” was found to be deceptively similar to the earlier registration THR1VE registered in respect of “Food protein for human consumption; whey protein; food preparations with added vitamins” in class 29. Registration was refused. Neither party filed evidence. Would the outcome have been different if the applicant had filed evidence of the co-existence of the Opponent’s marks with a number of third party Class 5 registered marks incorporating THRIVE as an element?
CapBran Holdings LLC v Uncle Bills Australia Pty Ltd [2020] ATMO 82 (13 May 2020)
Uncle Bills Australia Pty Ltd applied for registration of NUTRIBLITZ for class 7 goods including blenders. The Opponent provided evidence of a significant reputation in the NUTRI BULLET trade mark for blenders. As a result of this reputation and the similarities between the marks, including the shared connotations of BULLET and BLITZ with the idea of speed and destruction, the Delegate found that use of the applied for mark NUTRIBLITZ would be likely to cause deception or confusion amongst consumers who would be caused to wonder whether the goods originate from the Opponent. A good example of a s.60 (reputation-based) case in which the marks may well have been held not to be deceptively similar if the s.44 ground had been considered by the Delegate.
Gulf International Lubricants Ltd v Swire Industry Limited [2020] ATMO 83 (15 May 2020)
An application for registration of GULFPRIDE in class 1 was found to be deceptively similar to the earlier registration of GULF registered for a range of lubricants in class 4. The earlier GULF registration was not disclosed during examination by the Trade Mark Office following changes in classification and the limitations of the searches conducted by the Examiner. Registration was refused. This decision highlights the importance of comprehensive searching before committing to a trade mark.
Jean Patou v Plexus Worldwide LLC [2020] ATMO 86 (25 May 2020)
The Opponent provided evidence of its significant reputation in JOY for perfume persuading the Registrar of the likelihood of deception and confusion if the applicant were permitted registration of the applied for mark, JOY LOOKS GOOD ON YOU. Registration was refused. Another successful s.60 (reputation-based) case. Both parties filed evidence and written submissions instead of attending a Hearing.
Another opposition where the absence of an intention to use was established. The Applicant filed an application for registration of the trade mark CODEBREWERY while in negotiations with the Opponent for sale to the Opponent of the domain <codebrewery.com.au>. At the time of filing the Applicant was aware that the Opponent was planning to use the trade mark and that its preparations for use were well progressed. While an intention to use will usually be inferred from the filing of an application, evidence filed by the Opponent was sufficient to shift the onus to the Applicant to demonstrate that it had an intention to use the CODEBREWERY trade mark. The Applicant did not demonstrate the necessary intent and registration was refused.
Bega Cheese Limited v Saputo Cheese USA Inc [2020] ATMO 93 (28 May 2020)
Applicant’s mark
Opponent’s mark
The marks were characterised as “Two cheerful, animated cheese-sticks with chunky hair and animated gestures”. The Delegate found a “total resemblance” between them and decided that they were substantially identical.
Applicant’s marks
Opponent’s marks
These marks were held them to be deceptively similar, largely due to the likelihood of imperfect recollection by prospective purchasers.