Trade Mark Update- August 2018

Decisions from the Australian Trade Marks Office

Trade Mark Update: August 2018
Briony Pearson

It’s time again for our brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:

Trade marks: Out of time evidence admitted at hearing

Satnam Imports Pty Ltd v Simon Walter Sharpe [2018] ATMO 130 (17 August 2018)

Simon Walter Sharpe (“Sharpe”) applied to register trade mark No. 763149 (detailed below) on 6 April 2016. The following services were specified under Class 35: retailing of goods; wholesaling of goods; discount services; distribution of goods; the bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase the goods; advertising and marketing.

Trade Mark Application No. 1763149
Trade Mark: DISCOUNT PARTY WAREHOUSE (Logo)
Owner: Simon Walter Sharpe

Satnam Imports Pty Ltd (“Satnam”) opposed the filing on the grounds that it would be contrary to law (s 52- ss. 42(b)), the applicant is not the owner of the mark (s 58) and a similar mark has acquired a reputation in Australia (s 60) of the Trade Marks Act 1995. The trade mark in question is:

 

Satnam requested an extension of time to file Evidence in Support on 7 April 2017. The delegate, however, was not satisfied that it was appropriate to grant the entire month’s extension and instead allowed the Opponent 14 days.  The Opponent did not respond to this request, instead filing the Evidence in Support out of time on 10 May 2017.  The material filed was subsequently noted to be out of time.

Regardless, the Opponent filed submissions to allow the evidence supplied on 10 May 2017 to be allowed into evidence at the hearing under Regulation 21.15(4).  In this regard, the Registrar may be informed on any matter before them which they reasonably believe to be appropriate, allowing the Registrar not to be bound by the rules of evidence.

The Trade Marks Office Manual of Practice and Procedure (Part 51, para. 2.6) was referred to in examining if the case circumstances would fall under Reg. 21.15(4). Under this, evidence filed late, although generally not considered by the Delegate may be heard based on the decision made in court. Having late evidence heard is not a matter of routine but if a compelling case is put forward the inclusion of late submissions may be allowed as evidence.  Ultimately, the Opponent’s evidence was included and allowed into evidence.  This decision was based on a variety of factors, specifically being the absence and illness of Satnam’s sole director and the evidence being of probative value with the potential to affect the case outcome.

In relation to the claims, failure to establish opposition meant that the applicant was permitted to register the mark.

Key takeaway: While the trade mark office is taking a hard line of extensions of time for filing evidence, there are circumstances where out of time evidence may be allowed at a hearing. Seek professional advice.

Trade marks: To be taken in their whole entity

Monster Energy Company v ODD Games Pty Ltd [2018] ATMO 131 (17 August 2018)

ODD Games PTY Ltd (“ODD”) filed an application for trademark No. 1770632  for “Monster Truck Destruction” in Classes 16, 25, 28 and 41 of the International Classification of Goods and Services on 13 May 2016.

Trade Mark Application No. 1770632
Trade Mark: MONSTER TRUCK DESTRUCTION
Owner: ODD Games Pty Ltd

Monster Energy Company (“Monster Energy”) opposed the mark on the grounds its use would be contrary to law (s 42(b)), deceptive similarity (s 44) and due to the reputation of another mark (s 60) of the Trade Marks Act 1995.

Under Section 60, a trade mark can be opposed based on the grounds that another mark had, before the priority date, acquired a reputation in Australia in respect of the applicant’s goods or services, and registration of the applicant’s mark would be likely to deceive or cause confusion due to the reputation of the other mark.

In particular, Monster Energy were relying on the reputation in its trade marks MONSTER ENERGY, and:

 

 

The hearing officer noted that, unlike section 44, section 60 DOES NOT require that the goods and services be similar or closely related to those of interest to the applicant.
The reputation of Monster Energy in its marks was undisputed. At issue was whether registration of “MONSTER TRUCK DESTRUCTION” was likely to deceive or cause confusion, given the (undisputed) reputation of Monster Energy’s marks.

In order to assess the likelihood of confusion, the hearing officer referred to French J in Registrar of Trade Marks v Woolworths (‘Woolworths’). In Woolworths, French J referred to ascertaining whether people would wonder if closely related goods or services originated from the same source, considering all of the circumstances – including the deceptive similarity in respect of all of the goods and services in the applicant’s specification.

When assessing whether MONSTER TRUCK DESTRUCTION was deceptively similar to the MONSTER marks, it was highlighted that the comparison must include the trademarks in their entirety. While the hearing officer acknowledged the common element between the marks was the word “MONSTER”, he asserted that there are significant differences between the marks which outweigh the common word – namely, the distinctive meaning and idea of MONSTER TRUCK. According, it was found that the ground of opposition under s60 could not be established.

Indeed, similar conclusions were drawn in respect of the s44 and s42(b) opposition grounds which relate to deceptive similarity to a registered mark, and contrary to law (that is, likely to mislead or deceive according to the Australian Consumer Law), respectively.

In view of the above, the opposition was not successful.

Key takeaway: The assessment of deceptive similarity is directed toward marks as a whole, and not necessarily toward merely the sharing of a common element or word.

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