Trade Mark Round-Up - July 2017

Decisions from the Australian Trade Marks Office

Trade Mark Update – July 2017
Andrew Clarke

Every month, we provide a brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We will report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.


The Stone & Wood vs Thunder Road Trade Mark Saga Continues…

Intellectual Property Development Corporation Pty v Fermentum Pty Ltd [2017] ATMO 68


The parties.

The two parties involved in this decision have been embroiled in a legal stoush surrounding trade mark infringement and “passing off” for years. The latest chapter of the story involves Trade Mark Application No. 1541641 to the words PACIFIC ALE. The trade mark, filed on 19 February 2013 by Fermentum Pty Ltd (the holding company owning Stone & Wood Brewing Co.) is a divisional application of Trade Mark Application No. 1440192 (which was filed on 2 August 2011). The PACIFIC ALE trade mark specification lists the relevant goods as those of class 32: Pilsner; Ale; Lager; Draught Beer; and Bitter beer.

Intellectual Property Development Corporation (“IPDC”) opposed the acceptance of the PACIFIC ALE trade mark. IPDC is part of a group of companies that operate an import/export business in Australia, New Zealand, Europe, USA, and South Africa (“ICB Group”). IPDC also holds the intellectual property for Elixir Signature Pty Ltd, which operates a craft beer brewery in Melbourne – the Thunder Road Brewing Company. For the purposes of this summary – IPDC, Elixir, and Thunder Road Brewing Company are collectively referred to as “Thunder Road.”

The Beers.

Fermentum began its brewing operations in November 2008 with an aptly titled beer: ‘Draught Ale’ (because its sale was restricted to kegs).  In 2010, Fermentum extended the distribution of Draught Ale to bottles – incentivising the rebranding of the beer to ‘Pacific Ale’ in or around November 2010.

Thunder Road began brewing in May 2010, and sells its beers under the THUNDER ROAD brand. Interestingly, Thunder Road claims to have brewed beer in the self-described “Pacific Ale style” since January 2015.

Are comments regarding evidence from the Federal Court persuasive in a Patent Office Hearing?

The Australian Trade Marks Act 1995 requires that a trade mark must be rejected if it is not capable of distinguishing the Applicant’s goods or services from the goods or services of other parties.

As touched on above, these two parties recently went to the Federal Court to make a finding on another issue (but  also relating, in part, to the use of the phrase ‘Pacific Ale’). Thunder Road presented in evident the comments of the Federal Court judge in an effort to persuade the Delegate of some key points regarding the term ‘Pacific Ale.’ Thunder Road’s summary is as follows:

  • the phrase PACIFIC ALE “has a descriptive aspect to it” when used in relation to beer;
  • the word ‘Pacific’ can be used “adjectively to refer to someone or something that pertains to the Pacific Ocean” (such as the geographical origin of the hops used in the Pacific Ale beers offered for sale by [the Applicant] and a related company of [the Opponent]);
  • the word ‘Pacific” is also ‘an adjective which means peaceful or calm (among other meanings)’;
  • the “descriptive aspect” of the word ‘Pacific’ is “underlined by the reasons why Stone & Wood chose the name in the first place. The first was that one of the Stone & Wood breweries (the only one in operation in 2010) is located in Byron Bay, which is situated on the Pacific Ocean. The second reason was to generate a calming, cooling emotional response in consumers”;
  • [B]y choosing a name for its product that has a descriptive aspect to it, Stone & Wood ran the risk that others in the trade would use it descriptively and that it would not distinguish its product”;
  • through the good faith usage of third party traders, the phrase PACIFIC ALE has come “to serve a function of describing beers made from hops from Australia and New Zealand”;
  • the term PACIFIC ALE “has come to be associated with the use of Australian Galaxy hops”;
  • as a result, “the word ‘Pacific’ has come to be used descriptively in this sense. In these circumstances, it is difficult for Stone & Wood to establish that the name ‘Pacific Ale’ distinguishes its beer from the beer of other traders’;
  • the dominant use by Stone & Wood of the words ‘STONE & WOOD’ on all of its beer products ‘makes it less likely that the words ‘Pacific Ale’ on their own would distinguish Stone & Wood‘s product from the products of others”; and
  • the phrase PACIFIC ALE does not have a “reputation as a brand”.

To summarise, Thunder Road opine that the phrase Pacific Ale has always described a type of beer brewed using hops from Australia or New Zealand. Namely, a beer with a Pacific origin.

Of course, the Fermentum disagreed, highlighting that the reasoning of the Federal Court cannot be given any presumptive validity in the TMO decision. For a start, the Federal Court proceeding involved different issues and legal tests (specifically, breach of ACL and passing off). Perhaps more importantly – the Federal Court rules of evidence heavily impact on the admissibility and treatment of the evidence presented the Federal Court. As the rules of evidence are not applicable in proceedings before the TMO, presenting the same evidence may well result in a different outcome.

On this issue, the Delegate sided with Fermentum. However, the point was also raised that Thunder Road’s summary omitted some important language used by the Federal Court. For example, item (7), above, is wholly silent on the Federal Court highlighting that “Although the position was different when [the Applicant] launched its Pacific Ale product.” A number of other quotes include the expression “has come to” – indicating that the situation described was not at some point as it came to be.

Changing Circumstances – Remember it’s the relevant date that is important.

In present TMO proceeding, the distinctiveness of the trade mark is to be assessed at the Relevant Date – 2 August 2011 (i.e., the filing date of the parent application). As described above, Fermentum launched Pacific Ale in November 2010 (9 months prior to the Relevant Date). Although we just discussed the caution that must be asserted when considering Federal Court evidence, that proceeding clearly identified that in November 2010 the words Pacific Ale did not serve a function of describing beer made from Australian and New Zealand hops.

On the basis of a testimony from local beer expert Mr Kirkegaard, the Delegate was satisfied that at the Relevant Date the term Pacific did not function as a descriptive term in relation to the type of hops used to make the beer. In particular, Mr Kirkegaard made it clear that the descriptive use of Pacific in the last couple of years.

Therefore, Thunder Road was unable to establish that the PACIFIC ALE mark is not capable of distinguishing the goods of Fermentum under section 44 of the Trade Marks Act. 

Evidence is required to assert that geographical significance.

Thunder Road alleged that the word Pacific’ is a descriptive term that reflects the geographical region from which a beer originates. No evidence was filed to support such a proposition. Therefore, it not particularly surprising that the Delegate did not accept these arguments.  The term was considered to be far too vague and non-specific to perform such a function.

Because the ordinary signification of the term “Pacific Ale” to any person in Australia concerned with Fermentum’s goods does not include any indication of the style of beverage, the hops used in the manufacture of the goods, or the geographical origin of the goods – the the Delegate ruled that no ground of opposition  established under section 41.

Deceptive Similarity.

Thunder Road also alleged that the PACIFIC ALE trade mark is deceptively similar to Registered Trade Mark No. 464451, filed on 1 May 1987. Importantly, the two trade marks are registered in the same class of goods (the PACIFICO mark being registered in class 32 specifying beers, ales and porters).

Thunder Road’s primary argument is that the word ALE is descriptive, and should there be ignored when assessing deceptive similarity. Thus, the only difference between PACIFIC and PACIFICO is the letter ‘O’ at the end of the work PACIFIC. Furthermore, it is well established that the first syllable or start of a mark is the most important conducting this type of analysis.. Thunder Road further argues that the only difference between the two marks is ‘O’ versus ‘ALE’. These two parts sound similar, and “when allowance is made for the effect of careless pronunciation and speech, the risk of deception is obvious”.

Of course, Fermentum disagreed, instead highlighting that the ‘O’ sound is very distinctive. It allegedly gives the PACIFICO the feeling of being a foreign word, perhaps Spanish or Italian! Because words ending in ‘O’ are uncommon in English – it is this particular feature that will fix in the mind of Australian consumers.

The delegate found more strength to Fermentum’s arguments. Although the legitimacy of Thunder Road’s arguments were credited – it was ultimately determined that the simple addition of an ‘O’ to the end of the word PACIFIC creates aural, visual and conceptual differences in combination – are are therefore sufficiently memorable. Because the Delegate believed that confusion was therefore unlikely – the mark was allowed to proceed to registration.

***Update – Looks like this TMO decision has been appealed, in which case further proceedings before the Federal Court are likely. Watch this space for further developments.



Keep Fit “Like A Boss”

Crossfit Inc v Bossfit [2017] ATMO 74

This decision concerns Trade Mark Application No. 1658603, filed on 23 December 2014 – for the trade mark “BossFit”. The trade mark specification lists class 41, in respect of: Health club services (health and fitness training); and Physical fitness training services. The well known gym sensation Crossfit filed a Notice of Appeal to the registration of this trade mark.

The Opponent

CrossFit Inc was founded by Greg Glassman (a former gymnast), who developed the mark ‘CrossFit’ in around 1985, and has been using the mark in relation to fitness services since at least 1985. CrossFit currently have four registered trade marks relating to various classes of goods and services (including class 41, listing the same services as the BossFit mark). Three of the four marks are specifically to the word CROSSFIT.

The Applicant

BossFit as a brand was conceived and launched in September 2012, to promote health and fitness. The brand was launched initially for the local Brisbane community. According to BossFit, the word was conceived and inspired by a love of extreme sports, functional fitness, popular Facebook page Boss Hunting, and the popular phrase “Like a Boss” (as used in meme that feature a person completing an action with authority and finesse).

Are BOSS and CROSS deceptive similar?

The obvious difference between the words CROSSFIT and BOSSFIT is the letters “CR” being replaced by the letter “B.” CrossFit opine that phonetically and visually there is a high degree of similarity between the marks.

BossFit, however, were of the opinion that the words “Boss” and “Cross” have completely different natural meanings and convey completely difference concepts. Moreover, although they have the same word suffix – there are hundreds of trade marks registered in class 41 with the word suffix “FIT.” Therefore, this portion of the mark cannot itself be a distinctive aspect of the competing CROSSFIT marks.

The Delegate agrees with BossFit. Both of the trade marks are concatenations of two words – the second being “FIT.” This element lacks any distinctiveness in respect of the relevant services. It is well established that the first syllable of a word is, as a rule far the most important for the purpose of distinction (see, for example: Sargant J, in Re London Lubricants (1920) (1925) 42 RPC 264).

The Delegate had an easy path to assert that despite the slight aural similarity, the overall impression of the marks is quite different from one another. Therefore – the BossFit mark was directed to proceed to registration – and with it another clear cut example of how the first syllable of a word mark is the most important feature!



A bangin’ decision!

Daine Anderson v Bangin’ Bodz Heath & Fitness Pty Ltd [2017] ATMO 70

Sticking to the topic of fitness training in service class 41, Trade Mark Application No. 1669305  is for  BANGIN’ BODZ, filed on 15 January 2015 by Brisbane-based company Bangin’ Bodz Health & Fitness Pty Ltd (“Bangin’ Bodz H&F”).

The Opponent, Daine Anderson, alleged that the phrase “BANGIN’ BODZ” is not inherently adapted to distinguish the services of Bangin’ Bodz H&F from those of other persons. In this regard, the Anderson contends that the phrase is merely descriptive of the services listed in the classification. Evidence was filed in the form of a myriad of online dictionary definitions of both parts of the phrase.

The Delegate appears to cast doubt on the evidence presented by the Opponent. Although several definitions of the words “bang” and “banging” were presented as evidence, none were particularly concerned with the word usage in Australia. Among the definitions were some dubious user-created content sources, of little evidentiary weight (e.g., Urban Dictionary and Your Dictionary). The Delegate also dismissed the “Glossary of Eighties Terms,” which serves as a reminder that to ensure admissibility, evidence submitted in trade mark matters should be as close to the Relevant Date as possible.

Are words descriptive of a product inherently descriptive of an associated service?

Despite the Delegate’s reservations highlighted above, Anderson’s case were intentionally placed at its highest, in allowing the ordinary meaning of the phrase“BANGIN’ BOZ” to be along the lines of “very good bodies”. Anderson’s argument was, therefore, that other traders in the Relevant Services would wish to use the term because of its ordinary meaning.

The Delegate dismissed the arguments, highlighting that the Relevant Services include: “booking of tickets for sporting events.” Clearly, the the words BANGIN’ BODZ bears no association with this service under its alleged ordinary meaning. Even when used in relation to the closest of goods or services – fitness training – at most offers a covert and skilful allusion” to the body you might get if you undergo the Applicant’s services. The phrase BANGIN’ BODZ is not, in the Delegate’s view, a characteristic of any such services (only the resultant product). Therefore, the phrase must be found to be inherently adapted to distinguish those services.

The take home message from this case is to remember that a phrase used to describe a product is not necessarily descriptive of the services that produce said goods. This can often be used to your advantage when operating only in services – as the “descriptive” word is more likely to be considered capable of distinguishing your services from those of another party. Furthermore, when looking to file a trade mark to a word or phrase with a descriptive quality – it may be wise to consider the associated services that you perform


***Update! Looks like this case is also going to the Federal Court on appeal. Watch this space for further developments.


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