Cotters Trade Mark RoundUp – Summer 2010/2011

Welcome to the Cotters Trade Mark RoundUp, an overview of decisions of the Australian Trade Marks Office. The first RoundUp for 2011 covers S.52 opposition decisions from the end of 2010 (the most recent available).

No intention to use; confusion likely

MAXIMUM ADULT HARDCORE MATCHMAKER V ADULT MATCHMAKER

In Giga Pty Ltd v N Klaric [2010] ATMO 121 (1/12/10) the Opponent Giga Pty Ltd opposed the Applicant’s marks HARDCORE MATCHMAKER, MAXIMUM HARDCORE MATCHMAKER, ADULT HARDCORE MATCHMAKER and MAXIMUM ADULT HARDCORE MATCHMAKER and was successful under Section 59. The Opponent also established Section 60 against ADULT HARDCORE MATCHMAKER and MAXIMUM ADULT HARDCORE MATCHMAKER.

The Applicant’s evidence established a prima facie case for a lack of intention by the Applicant to use its Hardcore Matchmaker marks and the Opponent failed to rebut this evidence.

The hearing officer found that the Opponent’s ADULT MATCHMAKER mark enjoyed a substantial reputation for relevant services and that there was a clear likelihood of confusion between the Opponent’s mark and the Applicant’s marks MAXIMUM ADULT HARDCORE MATCHMAKER and ADULT HARDCORE MATCHMAKER (while the Opponent’s reputation in MATCHMAKER was insufficient for a likelihood of confusion in relation to HARDCORE MATCHMAKER and MAXIMUM HARDCORE MATCHMAKER).

Confusion likely

MINE2PORT V PIT TO PORT

In QMastor Ltd v Matrikon, Inc [2010] ATMO 125 (15/12/10) the Opponent QMastor Ltd opposed the Applicant’s marks MATRIKON MINE TO PORT, M2P and MINE2PORT and was successful against MINE2PORT under Section 60.

The hearing officer found that it was “not unlikely” that MINE2PORT would be seen as part of the Opponent’s family of “TO PORT” marks with the Opponent’s mark PIT TO PORT being a further variation of this established brand, such that confusion could not be avoided in the specialised market for mining software.

Deceptive similarity

MADO (stylised) V MIDO (stylised)
Class 14 goods

In Rado Uhren AG v AV Suvorin [2010] ATMO 118 (29/11/10) the Opponents Rado Uhren AG and Mido AG were successful under Section 44. The Opponents’ attorney cited inter alia three TMO decisions in which registration of four letter words was refused (BASE in the face of BOSE, MEGO in the face of LEGO, WOSS in the face of BOSS).

The hearing officer found that the Applicant’s mark MADO is deceptively similar to MIDO: both marks are short words with no obvious meaning; consist of two syllables each made up of a single vowel and a consonant; are arranged in the same order and sequence of letters; have the same weight, balance, general sense and emphasis; and start with the same letter, have the same letter in the same location and end with the same letter.

NEXT GENERATION & device V NEXT
Clothing, footgear, headware

In Next Retail Ltd v Marlin Australia Pty Ltd [2010] ATMO 117 (29/11/10) the Opponent Next Retail Ltd was successful under Section 44. The Opponent’s counsel utilised details of prior conflicting marks in the names of third parties submitted by the Applicant in relation to Section 60 to satisfy the hearing officer of the Section 44 ground. As the Opponent needed only to satisfy one ground of opposition the hearing officer did not consider it necessary to consider any other grounds.

Not deceptively similar

RED BULL V BULL TRADER
Alcoholic free beverages; alcoholic beverages

In Red Bull GmbH v Reschke Pty Ltd [2010] ATMO 119 (30/11/10) the Opponent Red Bull GmbH was unsuccessful in opposing BULL TRADER. On the Section 59 ground the Opponent’s evidence did not satisfy the hearing officer that there was a prima facie case for a lack of intention to use in relation to Class 32 (the Applicant had evidence showing use in Class 33). On Section 44 the hearing officer found that there were significant differences between the marks in look, sound and structure, and was not satisfied that there was any reasonable likelihood of confusion. On Section 60 the hearing officer found that the Opponent’s mark is so well known and recognised as an energy drink that it is unlikely that it would be confused with the Applicant’s mark.

Ownership

DIAMONDBACK

In Bradley v The Goodyear Tire & Rubber Company [2010] ATMO 116 (26/11/10) the Opponent Mr RG Bradley was successful under Section 58. The hearing officer found that the Applicant’s passenger tyres and the Opponent’s motor racing tyres are the same kind of thing. The hearing officer was satisfied that the Opponent’s evidence showed an intention to use that established the Opponent’s earlier claim to ownership.

The Opponent submitted insufficient evidence under Section 60 to allow the hearing officer to gauge, assess or determine reputation; reputation cannot simply be inferred.

The Applicant has appealed this decision and the outcome will be reported in due course. The parties’ dispute remains very much alive as the Opponent is also opposing another DIAMONDBACK application by the Applicant which is due to be heard in the next few months.

Please contact Cotters if you would like any further information about the changes or if you wish to request examination on any pending patent applications.

By Kim Nicholson
Cotters Patent & Trade Mark Attorneys
15 February 2011