Trade Mark Round-Up

May 2016

TM Update – May 2017
Andrew Clarke

Every month, we will provide a brief synopsis of some of the new and most interesting trade marks cases decided by the Australian Trade Mark Office (TMO). We won’t describe every aspect of each case, rather, the parts we find most noteworthy.


1: Sticking your trident to the opposition….

TRIDENT SEAFOODS CORPORATION v TRIDENT FOODS PTY LTD

This decision features Trade Mark Application No. 1635410, filed on 18 July 2014 by Trident Foods. The trade mark facing opposition is for the word TRIDENT, registered in both class 29 (coconut oil; cooked meals consisting principally of fish; edible oils; fish products; fish paste; fish (not live); food products made of fish; food made from fish; pastes containing fish; and tinned fish), and class 30 (fish sauce (condiments); and flavourings made from fish).

Namesake company, Trident Seafoods, opposed the application on two grounds.

Ground 1: Section 44

Trident Seafoods argued that the Trident Foods’ trade mark is deceptively similar to their own earlier filed trade mark (Trade Mark No. 1555536). The Trident Seafoods trade mark was filed on 7 May 2013, also in class 29, and is represented by the following logo: 

When considering the impact of the Trident Seafood trade mark, the TMO (sensibly) deduced that the most prominent feature of this logo to be the “Trident” text, and drew particular attention to both marks being registered in the same class of goods (class 29). Perhaps unsurprisingly, it was  found: “that there is a real and tangible danger that Australian consumers would imperfectly recall [Trident Seafood’s] trade mark and be deceived or confused as a result”. We would probably agree that the word “Trident” alone does not particularly distinguish the products of Trident Foods, from those displaying the above logo. Thus – the Trident Foods trade mark is indeed deceptively similar to the Trident Seafoods mark, reproduced above.

Importantly, a section 44 ground for opposition can be overcome if a trade mark owner can show “prior use, honest concurrent use or other circumstances”. Therefore, in an effort to save the trade mark, Trident Foods evidence use of the TRIDENT mark dating back to the 1970s. In addition, the major Australian supermarkets (including Coles and Woolworths) stocked fish-related products bearing the TRIDENT trade mark since at least 2000. Therefore, Trident Foods sold the relevant goods (those defined in class 29) during its time actively trading the marketplace.

However, as an interesting side-argument of the case, Trident Seafoods alleged that because of a period of relatively little use during 2007 and 2014 – the use of the TRIDENT trade mark was not “genuine commercial use”. For the period between 7 May 2013 until July 2014 – there was allegedly no prior continuous use of the mark. Trident Seafoods pressed that if Trident Foods could not illustrate use within this time, the mark was not eligible for the prior use defense to overcome a section 44 opposition.

Fortunately for Trident Foods, however, the TMO did not accept these arguments. Despite the gaps in production, evidence demonstrating the continuous innovation and development of new product ranges, which take into account an evolution of changing consumer demands, was sufficient to show that there always remained an intention to sell more products under the Trident Foods trade mark. It is not unusual practice in the marketplace, where demand for products may rise and fall dependent on consumer taste changes and cuisine fads, for products and trade names to have short absences during redevelopments.

Trident Foods could present a convincing history of successfully using the TRIDENT trade mark dating back significantly before the registered Trident Seafoods trade mark. For example, Trident Foods had two much earlier trade mark registrations (Trade Mark Application Nos. 266625 and 400953) for substantially the same trade marks, a long history of using the trade marks on edible foods and producing significant sales across Australia; and a history of investing significant time and money into rigorously defending their trade marks. Due to this significant prior use history, the decision before the TMO was straightforward – a ground for opposition under section 44 was not be established.

Ground 2: Section 59

The opponent also ran a brief “non-use” ground, alleging that Trident Foods had no intention to use the trade mark on the relevant goods. Rather, Trident Seafoods suggested that the trade mark was filed for strategic purposes. A time line was presented by Trident Seafoods, which we can only assume showed the following:

Although it does seem likely that the concurrent removal applications induced Trident Foods to file the current trade mark, the TMO considered that the evidence was of limited value. Were the removal application to be successful, conclusions would have to be made based on arguments that are somewhat unsupported by evidence. As the TMO cannot simply make inferences on the facts, in addition to the fact that Trident Foods had actually used the trade mark in the course of trade of the relevant goods in the past and presently. Furthermore – Trident Foods have used the trade mark continuously in the case of sauces containing fish and edible oils. No compelling evidence was presented that the trade mark was abandoned by Trident Foods at any time.

The TMO’s comments regarding the small volume of products sold by Trident foods is noteworthy, acknowledging that “there are many reasons why small numbers of a new or returning product are sold initially by traders”. Trade mark owners can take comfort in this decision; there is no need to show significant commercial use of a trade mark, especially near the launch of a new product. Highlighting the reasons for a small volume of goods being made initially appears to be an acceptable line of reasoning by the TMO. Although not discussed in this Decision, we would recommend making this defense more compelling by keeping detailed reports and research that can be used as evidence that the product was being tried and tested – and this may provide you with greater ability to explain periods without significant commercial use of your trade mark.

For the avoidance of doubt, the opposition by Trident Seafoods failed.

[UPDATE: Trident Seafoods appear to be appealing the decision of the TMO in the Federal Court of Australia. Stay tuned.]


2: Obtaining your faster trade mark 

AMAZON TECHNOLOGIES, INC APPLICATION

So, our friends over at Amazon filed Trade Mark Application No. 1647857 for the word “ASAP” on 18 September 2014, in classes 9, 38, 41, and 42 (all relating to various computer, software, multimedia and goods and services).

Unfortunately for Amazon, the primary Trade Marks Examiner rejected the application on the basis that ASAP is not capable of distinguishing Amazon’s goods or services from the goods or services of other parties. Specifically, the primary Examiner stated:

[ASAP] is defined in the Macquarie Dictionary as extremely quickly. It indicates that the goods and services are ones which operate extremely quickly or which will deliver or transmit electronic products extremely quickly. Other traders should be able to use the word ASAP in connection with goods or services similar to [those of the Applicant] (sic)”.

Amazon clearly saw significant error in the Examiner’s reasoning, and so requested a hearing at the Trade Marks Office (TMO). In line with the usual interpretation of the law, the TMO sided with Amazon. Specifically, Amazon highlighted that there is a significant distinction between “I need this software ASAP”, and the product itself (e.g., ASAP software).

Parallels could be drawn to other, similar, trade marks that have clear connotations of speed:

  • TM No. 865367 for RAPID in respect of certain kinds of computer software;
  • TM No. 603747 for QUICKEN in respect of computer software;
  • TM Nos. 721427 and 1731806 for PRONTO, in respect of computer software; and
  • TM No. 1546964 for PRESTO in respect of many goods and services.

The TMO agreed that because ASAP is not commonly used to reference software itself, a ground for rejection has not been accepted. Therefore, the trade mark was ordered to be registered.

Careful attention should always be given when dealing with trade marks that have a broad definition. Often that definition is not directly used to describe the relevant goods or services, and in these cases a broad word mark may be able to be obtained. Before filing your next word trade mark, always consider the relationship between the word and your products and/or services. Although software may run quickly, the actual software itself does not have any speed. Therefore, and as highlighted in this TMO decision, such trade marks should be found to be validly registerable.


& now for something completely different

TOKYO METROPOLITAN GOVERNMENT APPLICATION

This decision concerns Trade Mark Application No. 1731187, filed by Tokyo Metropolitan Government on 27 July 2015.  The trade mark, which is filed in classes 39 and 43 (spanning transport and accommodation, and reservation services) comprises the following logo:

During the initial examination of this mark, the Trade Marks Examiner cited registered Trade Mark No. 1297257, filed on 4 May 2009 by Belgian-based luxury travel company Abercrombie & Kent, as a barrier to the acceptance of the Tokyo trade mark. The registered A&K trade mark is a simple image of a standard ampersand (&) symbol, which is registered in class 39 (transport; travel arrangements; making reservations and bookings for transportation; conducting sightseeing tours for others, arranging travel tours; travel services offered by travel agents).

For the registered A&K trade mark to block acceptance of the Tokyo trade mark, the following criteria must be met:

✓   Have an earlier priority date;
�  Be substantially identical or deceptively similar with one another; and
✓   Be registered for the same or similar goods or services.

Obviously, the stylized ampersand symbol of the Tokyo trade mark – it is missing the top right hand side arc that joins to the straight diagonal line – is sufficient enough to knock back a substantially identical ground. There is no such stylization in the A&K mark. Furthermore, to the right hand side of the stylized & symbol, the word TOKYO appears in block uppercase letters. Clearly these trade marks are not substantially identical and the TMO found that the two marks have “clear and noticeable differences“.

Turning to the comments regarding whether the marks are deceptively similar, it is helpful to remember that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. As good as set in stone in the history of Australian trade mark law, the test requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling, or imperfectly recollecting, the earlier registration in the marketplace, to the impression that they would form from the Trade Mark in those same circumstances.

Interesting arguments are presented by Tokyo, which appear to focus on the inability of the A&K trade mark to distinguish the A&K goods and services over those of any other person. Tokyo commented that “the “&” symbol is a non-distinctive symbol and the likelihood of other traders wishing to use the same, unembellished “&” symbol is high“. However, the TMO did not accept such arguments because when the logo is used alone and unadorned  it does have sufficient capacity to distuighish A&Ks services.

Furthermore, and perhaps the most telling aspect of this decision, is that the A&K mark is registered as a trade mark for services in class 39, and no application has been filed to remove it. As such, the A&K trade mark has legal rights “in respect of others seeking to use substantially identical or deceptively similar marks as trade marks in respect of those, or similar services“. Therefore, would it have been wise for Tokyo to file for removal of the trade mark before trying to discredit its worth before the TMO? If nothing else, having a removal application pending during this TMO Hearing may well have made Tokyo’s arguments more compelling.

Because of the TMO’s position regarding the registered A&K trade mark having inherent capacity to distinguish, it followed that the Tokyo trade mark would be glanced at by potential consumers and seen as containing an ampersand at the beginning of the trade mark. Because Tokyo is a very well known geographical location, this aspect of the logo is considered as unable to differentiate the two trade marks. A potential purchaser may be caused to wonder if the relevant services are provided by K&A.

Accordingly, the TMO refused to register the Tokyo trade mark, as a ground for rejection under section 44 applies.

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