March 2020 – ATMO Highlights

Victoria Beckham v VB Skinlab Pty Ltd (9 March 2020)

Well-known celebrity Victoria Beckham tried to prevent registration of stylised VB SALON and VB SKINLAB trade marks in relation to salon services and personal care products but failed. The key ground of opposition was that her reputation in VB meant that the applicant’s use of the marks would be likely to deceive or cause confusion (s60). The other grounds rejected were under s42  (use would be contrary to law) and s62A (bad faith).  Appeal proceedings in the Federal Court are pending.


3Floorsup Pty Ltd v Fiix Inc [2020] ATMO 37 (12 March 2020)

Two months after the filing of the Applicant’s Evidence in Answer, the Opponent filed an application to amend the Statement of Grounds and Particulars. The Opponent did not provide sufficient explanation for the delay so the Delegate was unable to decide whether the delay was reasonable. The amendment request was therefore refused. This decision highlights the need to properly consider of all possible grounds of opposition at the outset and to act quickly if an amendment application is required.


Volkswagen AG v Tungpei Industrial Co Ltd. [2020] ATMO 40 (19 March 2020)

The mark TPI was found to be not deceptively similar to the earlier registered marks, TDI and TSI. It was noted that “There are a limited number of three-letter acronyms and consumers are accustomed to distinguishing between acronyms that differ by one letter, especially in circumstances, such as the current one, where the change in letter results in a difference in pronunciation.”


National Australia Bank Limited [2020] ATMO 41 (19 March 2020)

An application for registration of a composite mark consisting of the well-known NAB Logo and the word “thebridge” encountered earlier registrations of THE BRIDGE. A hearing was requested and the citation objections were withdrawn, taking note of the reputation in “nab” and applying Registrar of Trade Marks v Woolworths [1999] FCA 1020. Requesting a decision on the written record can be useful when an impasse has been reached at the ordinary examination level. (Compare the result here to Intel Corporation a Delaware corporation [2020] ATMO 4 (13 January 2020) which saw an application for INTEL FALCON rejected because FALCON was previously registered by a third party, even though INTEL is separately registered and well known).



US Dairy Export Council v Consorzio per La Tutela Del Formaggio Gorgonzola [2020] ATMO 44 (24 March 2020) and US Dairy Export Council v Consorzio per La Tutela Del Formaggio Asiago [2020] ATMO 45 (25 March 2020)

The US Dairy Export Council successfully opposed registration of GORGONZOLA and ASIAGO as certification marks for “cheese”. The Delegates accepted that the terms GORGONZOLA and ASIAGO are used in Australia to describe a type or style of cheese and in the case of GORGONZOLA that the style of cheese has been manufactured by various producers in Australia for many years. The descriptive use of the terms to refer to styles of cheese meant that neither GORGONZOLA nor ASIAGO are capable of distinguishing goods or services certified by the applicant or an approved certifier from uncertified goods. Registration was refused.


Half Price Blinds Pty Ltd [2020] ATMO 46 (26 March 2020)

HALF PRICE BLINDS was found to be purely descriptive and unregistrable for various types of blinds and services for the retailing of blinds and registration was therefore refused. The decision confirms the difficulty in obtaining registration of descriptive trade marks in the face of an objection under s41(6) and that that the essential test is whether the mark denotes the applicant alone as the source of the goods and services in relation to which it is used.


Square Inc v J plus S Pty Ltd [2020] ATMO 47 (26 March 2020)

TAX SQUARE was found to be substantially identical to the earlier registered trade mark SQUARE (consistently with previous decisions on CHOC CHILL and CHILL and CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS). This is another example of a decision where a finding of substantial identity arose from a focus on the “essential feature” of the marks, rather than a side-by-side comparison of their elements. The various “tax” services covered by the application were held to be similar to services covered by the earlier registered mark, namely “services for reconciling, namely processing payment transactions based on credit cards, debit cards, gift cards, and other forms of payment’ because these types of processes would be carried out as part of a tax assessment or preparation of a tax return. Registration of TAX SQUARE was refused.


Bayer Intellectual Property GmbH v Conquest Crop Protection Pty Ltd [2020] ATMO 48 (31 March 2020)

The applied for mark PRECEED for agrochemicals was found not to be deceptively similar to the earlier registered trade mark PRECEPT, taking into account the different sound of the marks (PRECEED was not a recognised word but sounds equivalent to PRECEDE) and the connotations of the marks. The decision confirms that even if marks look similar, differences in sound and meaning are determinative.