June 2020 – ATMO Highlights
G. & K. Fine Foods Pty Ltd v J DeLuca Fish Company, Inc. [2020] ATMO 97 (2 June 2020)
G.& K. Fine Foods succeeded in an application for removal of the registered trade mark “by Delucas” for non-use. The owner’s evidence showed use of the registered mark prior to the relevant period. Following a rebrand three years before the filing of the removal application, the goods were labelled DELUCA’S, and the evidence showed consistent use of the updated mark during the removal period. The Delegate found that the DELUCA’S and “by Delucas” trade marks were not substantially identical, and so use of DELUCA’S did not constitute use of the registered mark. The Delegate was not prepared to exercise his discretion to allow the trade mark to remain on the Register, because there was no evidence of the extent of its use prior to the rebrand or any residual reputation residing in it afterwards. This decision shows that “substantial identity” can still be narrowly construed in spite of a number of recent decisions suggesting the emergence of a more relaxed approach. It also highlights the need for trade mark owners to consider the impact of rebranding on trade mark registrations. In some cases, it will be possible to amend registrations to reflect the rebrand but in others, registration of the new format of the mark will be required.
Deanna Campese v LASH HQ PTY LTD [2020] ATMO 99 (4 June 2020)
An application for registration of LASH’D DOLL HOUSE for “beauty services” in class 44 was found to be deceptively to the earlier registered trade mark, LASH’D covering eyelash products in classes 3 and 8. The trade marks were found to be deceptively similar and “beauty services” and eyelash products were held to be to be closely related so registration was refused. The decision confirms the relationship between the respective goods and services and this should be kept in mind when providing infringement and registrability advice.
Chicago Mercantile Exchange Inc v Barry Taylor International Pty Ltd [2020] ATMO 100 (5 June 2020)
The opponent provided evidence of its significant reputation in E-Mini for financial services, specifically modified futures contract trading. The Delegate was persuaded of the likelihood of deception and confusion if the applicant were permitted registration of its logo for financial services so registration was refused. Another decision which highlights the scope of s.60 as a ground of opposition. The s.44 ground was not considered by the Delegate but probably would have failed because the applicant’s logo comprised numerous elements and, as a whole, appears unlikely to be deceptively similar to the word mark E-Mini.
Long Way Home Holdings Pty Ltd v Saroo Brierly Enterprises Pty Ltd [2020] ATMO 109 (23 June 2020)
“Lion” stands out as one of the best films of 2016. It was produced by See-Saw Films Pty Ltd and tells the true story of Saroo Brierly, a five year old Indian boy who finds himself lost on a train thousands of kms away from home and ultimately ends up living with adoptive parents in Tasmania before finding his biological mother twenty years later via Google Earth. The applicant in this matter is Saroo Brierly’s company which applied for registration of LION, in relation to live theatrical shows. Long Way Home Holdings Pty Ltd was a subsidiary of See-Saw and opposed registration based on its history of use of LION as the name of its film. The opposition failed because the use of LION as a film title was deemed not to be use of LION as a trade mark. The Delegate found that the film title was an indicator of artistic origin but not commercial origin. This decision is important for a number of reasons. It is one of those rare cases where the Australian Trade Marks Office has treated an OHIM Decision as a “highly relevant precedent” (namely the extended noughties battle which saw the company which owns the IP in the James Bond movies failing in its opposition to registration of “Dr No” by a third party). It also confirms that the “badge of origin” concept remains at the core of Australian trade mark law.
LG Electronics Inc v Samsung Electronics Co Ltd [2020] ATMO 114 (29 June 2020)
Samsung Electronics Co. Ltd applied for registration of SAMSUNG QLED for televisions, smartphones and other goods in Class 9. LG owned a registration of QLED for software for televisions and mobile phones and other goods in Class 9. LG opposed under s.43 on the basis that QLED describes display technology called “Quantum dot Light-Emitting Diode” and use of the term would be mis-descriptive in relation to products not incorporating this technology. The opponent had previously relied upon this line of argument in a complaint filed with the Advertising Claims Board but had failed because it was not accepted that the public would understand the technical meaning of the term. This influenced the Delegate’s decision that the applicant’s use of the term in the context of the mark SAMSUNG QLED would not be misleading and that the s.43 ground of opposition should fail. LG also sought to rely on its registration of QLED under s.44 but the Delegate took the view that the inclusion of the “striking and memorable element” SAMSUNG meant that the mark was not deceptively similar to QLED on its own.