Trade Mark Update: September 2018

Trade Mark Update: September 2018
Andrew Clarke

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: Reputation, Deception and Confusion – not simply Connection

Ferrero S.p.A v Nuts-about-tella Pty Ltd [2018] ATMO 147 (18 September 2018)

Nuts-about-tella Pty Ltd filed an application for trade mark No. 1747769 for “nuts-about-tella” in relation to Class 43 (providing food and drink) on 28 January 2016.

Trade Mark Application No. 1747769
Trade Mark: nuts-about-tella
Owner: Nuts-about-tella Pty Ltd

Ferrero S.p.A (“Ferrero”) opposed the mark on the grounds it use would be contrary to law (s42), deceptive similarity (s44),  a similar trade mark has a reputation of Australia (s60) and the application was made in bad faith (s62A) of the Trade Marks Act 1995.

In relation to deceptive similarity, perhaps somewhat unsurprisingly Ferrero failed to establish these grounds of opposition in respect to their marks in relation to the “NUTELLA” wordmark and various devices (i.e. 210675, 282424, 394170, 394172, and 1422008).

Instead, much of the decision related to section 60 which relates to a trade mark similar to another trade mark that has acquired a reputation in Australia in respect of particular goods and services may be opposed if the other mark is likely to deceive or cause confusion.  While the reputation of the mark NUTELLA was established by Ferrero, the hearing officer noted that it was necessary to satisfy that because of that reputation the public are likely to be deceived or confused by the use of the mark.

In this regard, it was acknowledged that consumer would likely see “nuts-about-tella” as a “reference to the Nutella product”, with the hearing officer inferring that a large percentage of consumers familiar with the Nutella mark would read the trade mark as “very enthusiastic for Nutella”.  However, he cautioned that this is not the relevant question under s60.  Rather “the question that must be asked is whether, considering all surrounding circumstances, a number of persons will be caused to wonder whether or not it might be the case that the Applicant’s Services are provided by the Opponent”.  According to this test, the hearing officer felt it unlikely that consumers would be confused into thinking that Ferrero itself has opened a business providing food and drink in Australia under the mark ‘nuts-about-tella’.

Other grounds were similarly not made out and the opposition was not successful.

Key Takeaway: Similarity to another trade mark which has acquired a reputation is only one step of the test under s60.  An opponent must also establish that because of the reputation, the public is likely to be deceived or confused by use of the mark.  This is not simply a matter of consumers realising a potential connection, but a tangible danger of consumers being caused to wonder whether the applicant’s goods/services were provided by the opponent.

Trade marks: The Use of Phone Words

Finsure Domain Names Pty Ltd v RESN Holdings Pty Ltd [2018] ATMO 139 (10 September 2018)

RESN Holdings Pty Ltd (“RESN”) applied for removal of trade mark No. 1469962 for “MYloan” in Class 36 on 4 January 2017. Finsure Domain Names Pty Ltd (“Finsure”), the Opponent, filed Notice of Intention to Oppose on 24 January 2017.

Trade Mark Application No. 1378036
Trade Mark: MYloan
Class: 36
Finsure Domain Names Pty Ltd

Under section 100, the burden of proof lies with the opponent to rebut that there has been no use of trade mark at any point in the relevant period. Thus, Finsure were required to show use of trade mark within the relevant three year period ending on 4 December 2016 (that is, a month prior to the non-use application being filed).

In this regard, Finsure attempted to rely up its use of a phone word “1300MYLOAN”, and submitted two bills from Telstra for use of the phone number associated with the phone word within the relevant period.  Accordingly, the hearing officer stated that the issue at hand was whether use of the phone word constituted use of a trade mark.

The hearing officer noted that the mere presence of 13/1300/1800 in a trade mark did not act to substantially alter the identity of the trade mark in question.  In view of this, the hearing officer found that the Opponent had established use of the trade mark in the relevant period, through its use of the phone mark.

In view of this, opposition was successfully established.

Key Takeaway: Phone words are not likely to be considered to substantially affect trade mark identity. Therefore, in terms of establishing trade mark use – the use of the mark within a phone number could be sufficient.




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