Download - Trade Marks Update IPSANZ Seminar Adelaide 12 March 2015 Ed Heerey & Ben Gardiner List G IP Barristers

Trade Marks Update

IPSANZ Seminar Adelaide 12 March 2015

Ed Heerey & Ben Gardiner

List G IP Barristers

Cantarella Bros v Modena Trading (2013) 99 IPR 492

• Cantarella has imported Italian foodstuffs since 1947

• Cantarella owns TMs ORO and CINQUE STELLE for coffee

• ORO is Italian for GOLD

• CINQUE STELLE is Italian for FIVE STARS

• Cantarella has sold in Australia:

• VITTORIA ORO branded coffee since 1996

• VITTORIA CINQUE STELLE branded coffee since 2000

• Since 2009, Modena imported coffee supplied by Molinari SpA branded

• CAFFÈ MOLINARI ORO and

• CAFFÈ MOLINARI CINQUE STELLE

• Cantarella sued Modena for TM infringement


• Modena’s defence:

• ORO and CINQUE STELLE not used as TMs

• ORO and CINQUE STELLE used in good faith to indicate the characteristics of the coffee products: s 122(1)(b)(i)

• Modena’s cross-claim:

• ORO and CINQUE STELLE not registrable under s 41

• not inherently adapted to distinguish or in fact distinctive

• ORO and CINQUE STELLE should be removed under s 92(4)(b)(i) because Cantarella has not used them as TMs for 3 years


Emmett J at trial, finding ORO and CINQUE STELLE inherently adapted to distinguish:

• Distinctiveness of foreign word depends on whether the particular word is sufficiently well understood in Australia

• 2006 Census: 316,685 people in Australia spoke Italian

• Second most used language in Australia

• Meaning of CINQUE STELLA and ORO may be clear enough to an Italian speaker

• But only a small minority of English-speaking people in Australia would understand the allusions made by those words

• CINQUE STELLA and ORO would not be generally understood in Australia as having laudatory meanings of FIVE STARS and GOLD


Modena argued that Cantarella had not used ORO or CINQUE as TMs:

• Cantarella has used VITTORIA as TM to distinguish its goods from other traders

• Cantarella has only used ORO and CINQUE STELLE to distinguish between products within Cantarella’s own range

• Dozens of other coffee distributors in Australia use ORO

Emmett J, finding Cantarella used ORO and CINQUE STELLE as TMs:

• CINQUE STELLE and ORO used almost invariably in conjunction with TM VITTORIA, but conjunctive use does not indicate that CINQUE STELLE and ORO are used only to distinguish different categories of Cantarella’s products


Emmett J, finding CINQUE STELLA and ORO used as TMs by Modena:

• Packaging and website include examples of use to designate origin:

• “Cinque Stelle is a coffee bar line specially [sic] for those wishing to serve coffee with unmistakable aroma in the Caffè Molinari tradition. The reasons for choosing Cinque Stelle are [that] the way the blends are selected guarantees the constant quality of the product”

• “The blends carrying the Cinque Stelle name are the pinnacle of our craft, bringing together selected Arabica and Robusta beans from plantations around the world, then blending and roasting them to perfection for an exceptional coffee experience.”

• “For those who are used to the best, Oro, Italian for gold, is an exquisite blend of select Arabica and Robusta beans. Enjoy Oro for a full body, rich crema and unmistakable aroma.”


Emmett J, rejecting defence for use in good faith to indicate the kind, quality or other characteristics of the goods (s 122(1)(b)):

• Not persuaded by evidence from Modena’s managing director that he believed CINQUE STELLE and ORO were being used simply as an indication of quality

• It may be that he did not intend to make deliberate use of any goodwill arising from Cantarella’s use of CINQUE STELLE and ORO

• Nevertheless, Modena used CINQUE STELLE and ORO as TMs, and is not entitled to defence under s 122(1)(b)

• Infringement found, no defence

• [NB – passing off and misleading conduct claims dismissed due to references to CAFFÈ MOLINARI on Modena’s products.]

Modena Trading v Cantarella Bros (2013) 215 FCR 16

• Modena appealed to Full Federal Court:

• S 41(2) and (3): that ORO and CINQUE STELLE are not capable of distinguishing

• S 92: that Cantarella’s registrations for ORO and CINQUE STELLE should be removed because Cantarella had not used them as TMs

• Appeal upheld by Mansfield, Jacobson & Gilmour JJ


Mansfield, Jacobson & Gilmour JJ on inherent adaption to distinguish:

• it was inappropriate to consider whether the Italian words were “commonly understood” or “generally understood” in Australia by “ordinary English speaking persons” as meaning five stars and gold.

• Even an English word may be descriptive despite being not “commonly understood”, eg EUTECTIC: (1980) 32 ALR 211



• “There is no necessity to approach the enquiry from an Anglocentric perspective in the Australian context which has rich cultural and ethnic diversities within its population.”

• The “common heritage” here included that of traders in coffee products sourced from Italy.

• Such traders may well be Italian or local importers, or local distributors who have in mind the large Italian speaking population in Australia as well as other Australians who, when it comes to coffee, want something with an Italian look and feel.

• Coffee in Australia is often associated with Italy.



• It is relevant whether other traders have also used the words.

• However, it is not necessary to establish descriptiveness, that other traders have used the words as TMs.

• It is unnecessary that consumers know what the words mean in English.

• However, given that Italian is the second most spoken language in Australia, many people would in fact know what the words meant.

• Moreover, Cantarella explains on its packaging that “Oro” means “gold”.

• Many Italian speakers would have understood CINQUE STELLE and ORO as common Italian laudatory descriptive words.



• Other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use ORO and CINQUE STELLE in connection with their own coffee-related goods, because:

• First, the words mean "gold" and "five stars", signifying high quality.

• Secondly, coffee in Australia is often associated with Italy, thus it is obvious to use Italian words to describe the quality of a coffee blend.

• Thirdly, Italian is the second most utilised language in Australia.

• Fourthly, Cantarella uses the words to describe product quality.

• Finally, and most importantly, other coffee traders have used the words ORO and CINQUE STELLE.


Mansfield, Jacobson & Gilmour JJ:

• S 41: ORO and CINQUE STELLE not inherently adapted to distinguish.

• S 92: Canterella has not used ORO and CINQUE STELLE as TMs.

• Canterella’s TM registrations should be cancelled.

• Cantarella’s TM infringement claim dismissed.

Cantarella Bros v Modena Trading [2014] HCATrans 53

• 14 March 2014: French CJ and Crennan J granted special leave for Cantarella to appeal to the High Court

• Cantarella’s key appeal points:

• What is the correct approach to determining inherent adapability of foreign language words that have not been adopted as part of the English language in Australia and do not have a commonly understood meaning in Australia?

• Did the Full Court formulate and apply a test which was contrary to s 41(3) and Clark Equipment?


French CJ to Modena’s counsel during responsive argument on special leave:

• Two points about ORO and CINQUE STELLA:

• “they are not simply descriptive terms, they are metaphors . . . [coffee] probably does not come in a gold colour”

• “they are laudatory metaphors . . . and they are in a foreign language, so that if one is taking a multifactoral approach to characterisation, they are characteristics which are of significance, are they not, and distinguish them from, say, the use of the English word such as “excellent”, “superlative” or “highest quality” or even an Italian version of those words.”

• [New point not squarely raised in trial or Full Court decisions or in Cantarella’s special leave submissions.]


• Substantive appeal heard by High Court on 5 August 2014

• Key appeal points under s 41(3) – inherent adaptability to distinguish:

• What is the proper application of Kitto J’s test in Clark Equipment (1964) 111 CLR 511 [the Michigan case]?

• does “signification which they ordinarily possess” refer to a meaning understood by both customers and traders, or does it include a meaning understood only by traders?

• What is the correct approach to determining inherent adapability of foreign language words that have not been adopted as part of the English language in Australia and do not have a commonly understood meaning in Australia and even when translated are at best allusive laudatory metaphors?


French CJ, Hayne, Crennan and Kiefel JJ, upholding appeal:

• “determining whether a trade mark is "inherently adapted to distinguish", as required by s 41(3), requires consideration of the "ordinary signification" of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.”



• The the consideration of the "ordinary signification" of any word or words (English or foreign) which constitute a trade mark is crucial, whether because:

• it is not an invented word and it has "direct" reference to the character and quality of goods, eg ROHOE, BARRIER

• it is a laudatory epithet, eg WHOPPER

• it is a geographical name, eg GREAT WESTERN, MICHIGAN, OXFORD

• it is a surname, eg LUDOWICI

• it has lost its distinctiveness, eg PYREX or

• it never had the requisite distinctiveness to start with, eg BARRIER



• A two stage test:

“Once the "ordinary signification" of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.”



• “If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly.

• However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.

• Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.”



• Full Federal Court misunderstood Lord Partker’s reference in Du Cros to the desire of other traders to use a mark

• “Lord Parker was not referring to the desire of traders to use words, English or foreign, which convey an allusive metaphorical meaning in respect of certain goods.

• What Lord Parker’s “other traders” test means in practice is well illustrated by the fate of BARRIER, MICHIGAN and WHOPPER.



• “Like TUB HAPPY for cotton goods, CINQUE STELLE and ORO were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words “having a direct reference to the character or quality of the goods”.

• Modena’s evidence:

• did not show that registration of ORO and CINQUE STELLE would preclude honest traders from having words available to describe their coffee products as Italian and/or premium products

• did not show that ORO or CINQUE STELLE are understood in Australia by persons concerned with coffee goods to be “directly descriptive of the character or quality of such goods”

• ORO and CINQUE STELLE are inherently adapted to distinguish


Gageler J, in dissent:

• Agreed with Full Court’s construction and application of s 41

• Considered legislative history of s 41, and the decisions in Clark (MICHIGAN), Burger King (WHOPPER) and Eutectic Corp (EUTECTIC)

• There is no reason why the test should operate differently in relation to a mark having an ordinary meaning in a foreign language

• Kitto J’s test in Clark was not confined to traders located in Australia or to ordinary English words

• The Full Court was correct to hold that the Clark test (whether TM needed by other traders) is not the same as the Mark Foys (TUB HAPPY) test (whether TM has direct meaning)


Gageler J, in dissent:

• “Gold and Five Star are ordinary English words. Used in respect of goods or services, they signify quality. They always have. No authority is necessary to establish that, used alone, they are not inherently adapted to distinguish goods or services of one person from goods or services of another. They are words which any person in the ordinary course of business might legitimately seek to use.”

• The Full Court correctly concluded that the Italian equivalents of those words were not inherently adapted to distinguish the goods of one person from the goods of another “when applied in Australia to goods of a kind commonly associated with Italy, often enough imported from Italy and often enough sold to Italian speakers.”

Lift Shop PL v Easy Living Home Elevators PL (2013) 103 IPR 511

• Applicant’s registered TM: LIFTSHOP for elevators

Buchanan J, dismissing TM infringement claim:

• Respondent did not use LIFT SHOP as a TM in its webpage title as displayed in internet search results:

Easy Living Lifts | Home Elevators | Lift Shop – Lift Shop

www.easy-living.com.au

Lift Shop PL v Easy Living Home Elevators PL (2014) 106 IPR 419

Besanko, Yates and Mortimer JJ, dismissing appeal:

• Objectively considered, “lift shop” as used in Respondent’s webpage title did not function to distinguish its goods from those of others

• People using the search term “lift shop” would understand from the search results that the Respondent supplied “lifts”

• Neither the prominence nor the positioning given to “Lift Shop” in the webpage title imbued those words with the character of a TM

• In the larger setting provided by the results pages, “lift shop” designated that the Respondent’s business was of the same character as others grouped and operating as “lift shops” – the antithesis of TM use

• Obiter: the Respondent also entitled to defence under s 120(2): Respondent’s use not likely to deceive or cause confusion

Phone Directories Company Australia v Telstra Corp Ltd (2014) 106 IPR 281

• Telstra applied for word mark YELLOW for print and online telephone directories and related goods and services

• TMO dismissed oppositions by two parties against YELLOW

• Yellowbook.com.au PL applied for YELLOWBOOK in respect of an online business directory and related goods and services

• TMO upheld Telstra’s opposition against YELLOWBOOK

• All three TMO decisions appealed to Federal Court and heard together by Murphy J


Murphy J upholding opposition against Telstra’s YELLOW TM for no capacity to distinguish (s 41):

• Word YELLOW has no inherent adaptability to distinguish Telstra’s goods and services from those of other persons (s 41(3))

• The word YELLOW is inherently descriptive of that colour, which is a colour commonly used in print and online business directories

• Other traders are likely, without improper motive, to want to use the word YELLOW in a manner which would infringe if registered

• Telstra’s evidence did not establish any use of YELLOW as a TM prior to filing date

• If (contrary to this view) Telstra’s use was as a TM, it was insufficient to establish actual distinctiveness for registration under s 41(6) or 41(5)


Murphy J, in obiter:

• opposition against Telstra’s application for YELLOW also made out under s 44:

• YELLOW is deceptively similar to four earlier TM applications in respect of directories and related goods and services:

• THE YELLOW ENVELOPE

• YELLOW DUCK

• YELLOW ZONE

• YELLOW DOOR

• Opposition against Telstra’s application for YELLOW not made out under s 59 - Telstra had intention at application date to use the TM


Murphy J, upholding Telstra’s opposition against YELLOWBOOK:

• YELLOWBOOK is deceptively similar to YELLOW PAGES (s 44)

• Also likely to deceive and cause confusion (s 60)

Full Court appeal on all three cases put on hold pending High Court’s decision in Cantarella.

Full Court appeal hearing fixed for 27-29 May 2015 before Besanko, Jagot and Edelman JJ.

Mastronardi Produce Ltd v Registrar of Trade Marks (2014) 108 IPR 7

• In 2010 Mastronardi coined ZIMA as name to be applied to a range of golden grape tomatoes

• At that time ZIMA had no meaning in English and had not been been used in respect of tomatoes in Australia or elsewhere

• Registrar rejected Mastronardi’s application for ZIMA for tomatoes

• S 41: “ZIMA appears to be a reference to a single kind of tomato”

Gordon J, overturning Registrar’s decision:

• ZIMA is inherently adapted to distinguish under s 41(3)

• Inherent nature of TM cannot be changed by use: Burger King

• Rejected Registrar’s arguments that Mastronardi intends to use ZIMA to distinguish its particular kind of tomatoes, and that it enjoyed a “factual monopoly”

Coca-Cola Co v Pepsico Inc (2014) 109 IPR 429

• Coca-Cola’s 4 registered TMs:

• 1938 sign TM: 1998 shape TM:


• Coca-Cola’s 4 registered TMs (cont’d):

• 2007 sign TM: 2007 shape TM:


• Coca-Cola alleged TM infringement by Pepsico’s “Carolina” bottle:

• [Also alleged passing off and breach of s 52 TPA]


Besanko J

• Pepsico did not have an intention to deceive or cause confusion, or an intention to copy Coca-Cola’s “Contour” bottle

• Rejected Coca-Cola’s argument that Pepsico “knowingly took a risk that consumers would be confused by the Carolina Bottle”

• Two main issues for TM case:

• Did Pepsico use the shape of the Carolina Bottle, or its outline or silhouette, as a TM?

• If so, is the shape of the Carolina Bottle, or its outline or silhouette, deceptively similar to one or more of Coca-Cola’s four TMs?


Besanko J

• In the context in which the goods are sold, the Carolina bottle shape is distinctive and is being used by Pepsico as a TM.

• The outline or silhouette of the Carolina bottle was not being used by Pepsico as a sign to indicate a connection in the course of trade between Pepsi products and Pepsico.

• Carolina bottle shape not deceptively similar to any of Coca-Cola’s TMs.

• If the outline or silhouette of the Carolina bottle were used as a TM, it is not deceptively similar to any of Coca-Cola’s TMs.

• Therefore, Coca-Cola’s TM infringement claim must be dismissed

• [Passing off and s 52 TPA claims also dismissed]

Apple v Registrar of Trade Marks (2014) 109 IPR 187

• Registrar accepted then revoked APP STORE under s 41(6)

• Apple appealed to Federal Court

• Yates J handed down decision same day as High Court in Cantarella

Yates J , dismissing appeal

• New words may be descriptive:

“The descriptive capacity of words and their capability to distinguish the goods or services of one person from those of others will vary, depending on occasion and circumstance. There are no hard and fast rules. It should also be recognised that language continuously changes and develops. New words and phrases will enter the vernacular. Their newness will not necessarily exclude them from the “common heritage” to which Kitto J referred if they nevertheless function descriptively.”


Yates J , dismissing appeal

• Question: whether APP STORE is “capable of distinguishing” services in Classes 35, 38 and 42 under pre-RTB version of s 41 TMA

• Convention mark – filing date and priority dates differed by 4 months.

• Apple’s App Store service was launched worldwide on 11 July 2008: just 7 days before the filing date and well after the priority date.

• Yates J held that the filing date is the relevant date for the purposes of s 41 TMA. (NB This is contrary to some earlier authority).

• Yates J considered that both “app” and “store” were ordinary English words used by Apple for those ordinary meanings.


Yates J , dismissing appeal:

• At the relevant date members of the public would have understood APP STORE as meaning a store through which application software could be acquired & that other traders would have wished to use those words for that meaning.

• Thus: not to any extent inherently adapted to distinguish in rel to Class 35 (retail store services featuring computer software provided via the Internet...)

• S 41(6): Not in fact distinctive by the relevant date (Apple’s service was launched “at most eight days” before the filing date)

• There is only one application for classes 35, 38 and 42 – if the application fails in class 35, it fails as a whole, and it is unnecessary to determine registrability in classes 38 and 42

Ly v The Queen (2014) 315 ALR 398

• AFP seized approximately 60,000 DVDs plus computers, printers and 7 DVD burners from businesses operated by Mr Ly

• Ly admitted that at least some of the DVDs were counterfeit.

• Ly pleaded guilty & was convicted for offences under s 132AJ(1) Copyright Act and s 148(1) Trade Marks Act.

• Maidment J (County Court) sentenced Mr Ly to 12 months prison, to be released after 8 months on good behaviour bond of $1500

• Ly appealed on several grounds: FC dismissed the appeal.

• FCA does not have jurisdiction to hear appeals in criminal proceedings under the TMA. Does have jurisdiction under the CA. Had jurisdiction in this case via associated jurisdiction (s 32 FCA Act)

Société Des Produits Nestlé SA v Christian & Anor (No.4) [2014] FCCA 2025

• Nestlé’s TM: MUSASHI registered for all goods in class 5, which includes pharmaceuticals and dietary supplements

• Mr Christian sold A-SASHI vitamins and dietary supplements

Judge Manousaridis (Federal Circuit Court) finding infringement:

• A-SASHI is deceptively similar to MUSASHI

• Leave to appeal granted by Yates J, appeal pending

ATMO Decisions

Trade Marks Office decisions

Insufficiently distinctive – s 41

DOMAIN SHIELD

Various internet related services including registration of domain names

Domain Shield Pty Ltd [2014] ATMO 30

Note also that the HO considered that exclusion of the impugned services would give rise to refusal under s 43 TMA.


TRUE A2

Semen products, animal breeding products, veterinary services

A2 Corporation Ltd [2014] ATMO 94

“The term TRUE A2 indicates that on a genetic level, the bovine carries two copies of the A2 allele (is a TRUE A2 bovine).”


PEOPLE FIRST

Computer hardware, software, business administration.

Midland Software Limited [2014] ATMO 57

S41(5) considered applicable but insufficient evidence of use


LANCASTER

Leather goods, bags, satchels, briefcases, wallets

Tchen Kil Tchun [2014] ATMO 28


MH370

Entertainment, event management services, etc

Aoan International Pty Ltd [2014] ATMO 118


REMEMBRANCE PARKS CENTRAL VICTORIA

Funeral and crematoria servicesCemetery management

Bendigo Cemeteries Trust [2014] ATMO 82


Memorials@homeVarious goods and services including clothing, footwear, website development, funeral and crematoria services.

Application rejected for all classes except cremation services (“which cannot be conducted in people’s homes”).

Bendigo Cemeteries Trust [2014] ATMO 86


Colour green (pantone 348C)

Registration sought in relation to fuels, vehicle service stations etc, take away food services. Registration under s 41(6) considered.

BP p.l.c [2014] ATMO 59


Colours purple and orange (pantones 2612 and 1505)

Registration sought in relation to pharmacy retail and wholesale services. Mark considered to be to some extent, but not sufficiently, inherently adapted to distinguish. Insufficient evidence of use.

Discount Drug Stores Pty Ltd [2014] ATMO 66


Registration sought in relation to wine and wine base beverages.

Mark considered to be to some extent, but not sufficiently, inherently adapted to distinguish. Evidence of use insufficient to demonstrate capacity to distinguish.

Accolade Wines Australia Ltd v Delegate’s Wine Estate Ltd [2014] ATMO 76

Insufficiently distinctive – s 177 (certification mark)

PARISH OF POKOLBIN

Tourism promotions, arrangement of festivals, provision of information etc

Parish of Pokolbin Incorporated [2014] ATMO 98

Insufficiently distinctive – s 41 (revocation of acceptance)

Shape mark: 4 balls in container with hook device registered in respect of bleaching preparations, other cleaning related products.

Henkel AG & Co KGaA [2015] ATMO 13

Sufficiently distinctive – s 41

PARACETAMOL OSTEO-TAB

Pharmaceutical preparations; pain relieving preparations.

GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited v AFT Pharmaceuticals Limited [2014] ATMO 100


Sports & bodybuilding supplement.

Universal Health International Pty Ltd v Universal Protein Supplements Corporation [2014] ATMO 64


WELLNATION CLINICS

WELLNATION

Beauty therapy preparations, pharmaceutical preparations, wholesaling & retailing of same, education & training in beauty techniques

Australian College of Natural Medicine Pty Ltd [2015] ATMO 15


DISCOVER DOWNUNDER

Production of television programs.

S 41(5) TMA applied.

Bauer Consumer Media Ltd v Evergreen Television Pty Ltd. [2014] ATMO 78

Contrary to law: s 42(b) – copyright infringement

Heart logo included within the mark is an original artistic work in which copyright subsists belonging to the opponent.

The Senior's Choice, Inc v The Senior's Choice (Australia) Pty Ltd [2014] ATMO 51

Contrary to law: s 42(b) – breach of ss 18 & 29 ACL

THE MIGHTY MAROONS

Car sticker, fridge magnets, cups, mugs, tea towels etc

Australian Rugby League Commission Limited v Jane Reid [2014] ATMO 108

S 43 established: TM carries deceptive connotation

“the Applicant’s vineyard is not in Tanunda itself but is sufficiently outside the township (and sufficiently close to other small local towns) to disqualify the Applicant from using the Trade Mark when the trademark has … the “flavour of being a geographical location””

B Seppelt & Sons Ltd v Blaxland Vineyards Limited [2014] ATMO 88

S 43 established: TM carries deceptive connotation

Medical centre business management etc

“The opposed trade marks include a description of services that are not in fact provided by the applicant.”

Commonwealth v Primary Health Care Ltd [2014] ATMO 92

PRIMARY HEALTH CARE

Substantially identical

v

Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85

Deceptively similar TMs

v

Clothing, footwear, headgear v Clothing, footwear, headgear

Hot Tuna IP Limited v Select GmbH Unternehmen fur Zeitarbeit [2014] ATMO 49


REVITIVE v REVESTIVE

Creams, lotions, pharmaceutical v Pharmaceutical preparations

preparations, medical goods

Takeda GmbH v Actegy Limited [2014] ATMO 38


MICROGENICS

v

Nutritional supplements, milk products v Vitamins, vitamin preparations etc

Sanofi-Aventis Healthcare Pty Ltd v Russian Federation [2014] ATMO 32


v

Sports & body building supplements v pharmaceuticals/homeopathic medicines

Universal Health International Pty Ltd v Universal Protein Supplements Corporation [2014] ATMO 64


v

Goods incl soaps, perfumery etc v cosmetics, toiletries, hair care preps

A G Professional Hair Care Products Ltd v Geagroup Invest SRL [2014] ATMO 65


LAVIENA v LAVERA

Skincare cosmetics etc v Various classes incl Class 3.

Laverana GmbH & Co. KG v Lalisse Australia Pty Ltd [2014] ATMO 44


COMBINED COMMUNICATION SOLUTIONS

v

Many different services v Wireless & two-way radio comm services related to computer software

Combined Communications Pty Ltd v Combined Communication Solutions Pty Ltd [2014] ATMO] 117


SYNECTHA v SYNACTHEN

Pharmaceutical preparations v Pharmaceutical and veterinary preparations

Novartis AG v Obvieline [2014] ATMO 79


TRIO CRAFTSMAN v CRAFTSMAN

Hinges, brackets, nails etc v Hinges, brackets, nails etc

Sears Brands LLC v Trio Group Australia Pty Ltd [2014] ATMO 46


CAESARSTONE v

Panels for floors, floor coverings etc v Ceramic tiles

CERAMICHE CAESAR S.p.A. v CaesarStone Sdot-Yam [2015] ATMO 12


5SOS v SOS

Various classes including v Various classes incl clothingClothing, footwear, headgear

One Mode Productions Limited [2014] ATMO 89


PRIDE & GLORY v HOPE & GLORY

Toiletries, perfume etc v Toiletries, cosmetics etcLeather & imitations of leatherClothing, footwear, headgear

Soap & Glory Limited v Boi Trading Company Limited [2014] ATMO 47


V CLUEDO

Scientific equipment, cash registers, v Video games, paper etcClothing, footwear, headgear Clothing, footwear, headgear

Hasbro, Inc v Mogens Rud Svendsen [2014] ATMO 29


NATURE’S GIFT V SNAPSSNAP BAR

Pet food v & other similar marks registered in relation to Foodstuffs for animals

Brenda Robinson v Nature’s Gift Australia Pty Ltd [2014] ATMO 96

Not deceptively similar TMs

v

Clothing, footwear, headwear & other marks registered in various

classes

S 60 also pressed unsuccessfully

Qantas Airways Limited v Luke Edwards [2014] ATMO 40

Not deceptively similar TMs - words

IKON v NIKON

Juices, mineral water, softdrinks v 20 TMs in various classes mainly rel to

cameras & photography

Nikon Corporation v Andrew Lovric [2014] ATMO 48


v

Shop display fittings, commercial v 4 marks in various classes mainly rel to refrigeration units etc cameras & photography but also

including “repair of kitchen appliances”

Nikon Corporation v Nison Engineering Co Pty Ltd [2014] ATMO 95


v

Starter cables for motors; batteries v Music systems; loudspeakers etc

Bose Corporation v Heino Buse MX Import GmbH [2014] ATMO 110


v CARS ON DEMAND

Transport services, vehicle rentals v Event management services

Booking of hire cars, car rentals

Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87


SITEFORCE v SITECORE

Web-based software applications v Various classes incl application software

Sitecore Corporation A/S v Salesforce.com, Inc [2014] ATMO 37


v SUNNY BEAM

SUNNY BOY

SUNNY

& other marks incorporating the word SUNNY

Traffic signs, other signs Many different classesSMA Solar Technology AG v Sunny Sign Company Pty Ltd [2015] ATMO 9


MALTITOS v MALTESERS

Confectionery; biscuits; chocolate; cocoa; products made from or including chocolate and/or cocoa

Mars Australia Pty Ltd v Delfi Chocolate Manufacturing [2014] ATMO 113


FAIRSTONE v FIRESTONE

Paving and building materials etc v sealants for use in building & construction

Bridgstone Licensing Services Inc v Marshalls Mono Limited [2014] ATMO 114


RAWC v

Aerated beverages etc v Aerated beverages etc

C Coconut Water Pty Ltd v Natural Raw C Pty Ltd [2014] ATMO 119


RENAISSANCE LIVING v

Retirement home services etc v Hotels, motels, resorts etc

Renaissance Hotel Holdings Inc v Ravida Properties Pty Ltd [2014] ATMO 105


WAXHEAD v

HEAD Sporting articles incl surfboards V Sports equipment, clothing

Head Technology GmbH v Uloc Pty Ltd [2014] ATMO 90


TWINS v

Sporting articles (boxing equipment) v Games & playthings, toys

Major League Baseball Properties, Inc. v Spartan Sports Holdings Pty Ltd [2014] ATMO 81


v

Pharmaceutical preparations v Pharmaceutical preparations

Janssen Biotech, Inc v Celltrion, Inc. [2014] ATMO 121


THERMOSOFT v THERMALOFT

THERMAX

Pillows, quilts, eiderdowns, mattress covers etc

Sleepcraft Distributors Pty Ltd v Fisi Fibre Sintetiche [2014] ATMO 71


SAWZILLA v SAWZALL

Power tools

Techtronic Power Tools Technology Limited v Global Power Brands International Pty Ltd. [2014] ATMO 109


v

Clothing including sportswear, footwear including sports shoes

PUMA SE v Bangkok Rubber Public Company Limited [2014] ATMO 75


v

Computer software, online databases v Online training & technical

support

NetApp Inc v Trading Reference Australia Pty Limited [2014] ATMO 61

Not similar goods

COSMOPOLITAN v COSMOPOLITANHand tools, cutlery, household utensils v Registered in various classes

including printed publications,

AV goods, drapes & curtains

“[COSMOPOLITAN] is a word often associated with sophistication, worldliness and glamour, and it is highly likely that both parties adopted it for precisely this reason ... Because of this, and given that the goods in question are commonly made by separate manufacturers and commonly sold in stores, or sections of stores, dedicated to either one group of goods or the other, I am not satisfied that a connection would be assumed or wondered about.

Hearst Communications Inc v H.A.G. Imports Pty Ltd [2014] ATMO 67

Confusion likely: s 60

V

Salads, soups, dairy products v fruit drinks etcSandwiches, services rel to food

SABMiller International B.V. v Topflight Holdings Pty Ltd. [2014] ATMO 50


MCKebabs V

McFEAST

McCHICKEN

McMUFFIN

and many more!

Kebabs v various classes relating to food

MCD Asia Pacific LLC v Hoseyin Dogon [2014] ATMO 52


v

Beverages containing wine v Wine

Bilyara Vinyards Pty Ltd v Guorong Xu [2014] ATMO 56


v

Retailing of goods vVast use in relation to wide range

of goods and services

eBay Inc v Dean William Hawkins [2014] ATMO 54


VOLTAGEN v

Dietary supplements etc v pharmaceuticals

Novartis AG v Alpha Helix Inc. [2014] ATMO 45


v

Handbags & related goods v wrist watches / luxury goods

Omega SA (Omega AG) (Omega Ltd.) v Bingcheng Pan [2014] ATMO 58


YAKKA TOOLS v HARD YAKKA

Hand tools etc v workwear and protective clothing

Pacific Brands Workwear Group Pty Ltd v J.T.C. Import/Export Pty Ltd. [2014] ATMO 43


v

Engine components, gearing etc v bearings, gaskets, pistons etc

Federal-Mogul Corporation v Fujikura Diesel Co.Ltd. [2014] ATMO 31


VIRGIN v VIRGIN

Boiled sugar, confectionery etc v Various registrations in many classes

Takeda GmbH v Actegy Limited [2014] ATMO 38


McSLIDER v Mc[Food]

Food preparations v Many registrations in many classes rel to food

MCD Asia Pacific LLC v Coffee Cartel Pty Ltd [2014] ATMO 70 (8 August 2014)


v 101Domain

Registration of domain names v domain name services

101Domain, Inc v BB Online UK Ltd [2014] ATMO 120


ARGENTA v ARGENTA

Scientific guides etc v Contract research services, contract manufacturing

Argenta Limited v Argenta Discovery 2009 Limited [2014] ATMO 80


FRIENDBOOK v FACEBOOK

Consultancy services relating to v 2nd most popular website in the world social planning

Facebook, Inc. v Northsword Pty Ltd. [2014] ATMO 74


facemba v FACEBOOK

Provision of an Internet platform v 2nd most popular website in the world for social networking services

Facebook, Inc v FACEMBA, LDA [2014] ATMO 83

Confusion likely – s 60

V KLEENEX

Cleaning agents for the hands.

Kimberley-Clark Worldwide Inc. v The Reject Shop Limited [2015] ATMO 2


VANESSA HOGAN V

& other similar marks

Baggage, bags, hats, other accessories.

Tod’s S.p.A. v Jiang & Hou Pty Ltd [2015] ATMO 5


v

Stone benchtops & counters etc v Real estate services, building services

Doric Management Pty Ltd v Loukat Holdings Pty Ltd [2014] ATMO 99


BENEFIT BROWBAR v

THE BROW BAR

Hygenic & beauty services; beauty salon services

Chernae Noonan v Benefit Cosmetics LLC [2015] ATMO 17


v

CITIFX

CITI INSTANTFX

Citigroup Inc v City Index Limited [2014] ATMO 36

Confusion NOT likely: s 60

ENVIROBLANKET v ECOBLANKET

Soil, mulch, landscaping services v organic compost etc

Donzenac Pty Ltd v MCV Enviroworks Pty Ltd [2014] ATMO 42


INFLUGARD v INFLUVAC

Vaccines for human use v influenza vaccines

S44 also considered – not deceptively similar.

Abbott Biologicals BV v Novartis AG [2014] ATMO 60


PARACETAMOL OSTEO-TAB

v

PANADOL OSTEO

Pharmaceutical preparations; pain relieving preparations; medicines for human purposes

GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited v AFT Pharmaceuticals Limited [2014] ATMO 100

Bad faith: s 62A

v

Footwear Industries Pty Ltd v PT Alasmas Berkat Utama [2014] ATMO 41

Bad faith: s 62A

Di Bella Coffee… we know coffee&

vCrop to Cup … we know coffee

Registration sought in various classes relating to coffee. Opponent used the phrase “we know coffee” very widely in its advertising.

Cantarella Bros Pty Ltd v Espresso Enterprises Pty Ltd [2014] ATMO 68

Download - Trade Marks Update IPSANZ Seminar Adelaide 12 March 2015 Ed Heerey & Ben Gardiner List G IP Barristers

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