July 2020 – ATMO Highlights
Bacardi & Company Limited v Dickinson Distribution Group Pty Ltd [2020] ATMO 117 (1 July 2020)
Sadly for BOMBAY SAPPHIRE gin fans, the Australian Trade Marks Office recently decided an opposition in favour of an applicant seeking registration of “Royal Bombay Premium Lager” for alcoholic beers and other Class 32 products. Bacardi opposed, relying primarily on its rights to BOMBAY SAPPHIRE but every gin drinker will know that an image of Queen Victoria forms a prominent element of Bacardi’s branding so it was an obvious move to argue that the image was indicative of “royalty” and therefore increased the likelihood of confusion between the marks. Without evidence that Australian consumers “would recognize a monarch that had ceased her reign some 116 years before the Relevant Date”, the Hearing Officer decided that a far simpler reading of the portrait is possible…it shows someone dressed and posed in an old fashion, suggesting a beverage that has been around for a time”. Poor old Queen Vic! This is a surprising decision in a number of respects, noting in particular the fame of BOMBAY.
The Green Vineyards Pty Ltd v McWilliam's Wines Group Limited [2020] ATMO 118 (7 July 2020)
McWilliam’s Wines Group Limited filed an application for removal of The Green Vineyards’ registration of WINEMAKER’S CUT for non-use. While the trade mark was not shown on the company’s website, evidence of sales of 151 bottles of wine through its cellar door and at retail by way of restaurant sales during the non-use period enabled the owner to successfully oppose removal of the registration. Genuine commercial use of a trade mark will be enough, regardless of quantum and use of a trade mark with additions or alterations not affecting its identity is acceptable.
Australian Black Sheep Pty Ltd v Australian Ugg Pty Ltd [2020] ATMO 119 (8 July 2020)
Class 25 applications for footwear were filed for registration of AUSTRALIAN UGG ORIGINAL and the following logo:
The Delegate found that these marks were not deceptively similar to the following registered logos:
The word elements of the registered marks were deemed to be descriptive and “it follows that the scope of protection afforded by any of these marks is minimal indeed. The reversal of the words in AUSTRALIAN UGG ORIGINAL and ORIGINAL/S UGG (AUSTRALIA) alone is sufficient to distinguish between the goods of the parties.” The application was allowed to proceed. The marks passed the registrability threshold on the basis of s41(4) evidence and presumably it was impressive given that there are 222 registered UGG marks in Class 25 and 42 of them are for trade marks comprising both UGG and ORIGINALS. A reminder that trade mark registrations can give “minimal” protection so must be looked at in context.
Brightflash USA LLC v China Trade Services Pty Ltd [2020] ATMO 121 (14 July 2020)
This mark was found to be not deceptively similar to the opponent’s earlier registrations of IWATCH, taking into account the descriptiveness of the shared elements and the additional features in the applicant’s mark so the application was allowed to proceed. To quote the Delegate: “There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name”.
Registration of the above logo was successfully opposed by Monster Energy Company, which relied on its reputation in the following registered mark:
This is such a surprising decision given the obvious differences between the respective marks and it raises interesting questions about the scope of s60 and how far it should be stretched to accommodate parties with enormous reputations, noting that under s60 the relevant marks must be “similar”. How similar is the point. Here the Delegate acknowledged a conceptual similarity. Arguably even that is very well-disguised.
Glug Pty Ltd v Little Wonders Wine Company Pty Ltd [2020] ATMO 130 (31 July 2020)
Glug Pty Ltd successfully opposed an application for the removal of its TUMBLEWEED registration even though the use of the trade mark was by a related company Glug Management Company Pty Ltd. The use was accepted as authorised use because the two companies had the same directors and “As such they have always operated with the same ‘controlling mind’ or, to put it another way, ‘it must be inferred from the evidence that the two companies operated with a unity of purpose”. The Delegate accepted that the mark had been used in good faith even though the commencement of use was intended to remove the vulnerability of the registration to cancellation for non-use: “That motive was very likely a strong contributor to the commencement of use of the Trade Mark but as a matter of law this is not a relevant consideration”. The discussion on “authorised use” and “use in good faith” makes this an interesting Decision.