Case Notes, Deceptively similar?, s 44 TMA, s 60

Realcover (stylised) not deceptively similar to REAL INSURANCE

Real Estate Institute NSW Ltd v Hollard Insurance Company Pty Ltd [2017] ATMO 15 (22 February 2017)

Application for removal (for non-use) of mark depicted below which was registered in respect of various services including advertising and insurance.


Removal opponent also sought registration of the mark depicted below in relation to advertising, insurance etc services.  Removal applicant opposed registration of this mark pursuant to ss 42, 44, 58, 59 and 60.


Non-use application unsuccessful in relation to Class 36 (insurance, real estate affairs) but successful in relation to Class 35 (advertising etc).

(The removal opponent conceded on Class 35 prior to the hearing).

Opposition to registration unsuccessful – mark to proceed to registration.

Marks relied upon by the Opponent included REAL INSURANCE, REALSURE and the mark depicted below which were all registered in relation to various services associated with insurance.


Hearing officer considered that none of these marks was substantially identical with or deceptively similar to the mark applied for.

Grounds based on ss 42(b), 58, 59 and 60 also failed.


Case Notes, Non-use

Queen Adelaide just survives non-use application! Reportedly not amused.

Make Wine Pty Ltd v Modern Ancient Brands Pty Ltd [2017] ATMO 17 (24 February 2017)

This was an application for removal for non-use of the trade mark depicted below.  The trade mark owner was unable to show use in the non-use period but discretion to not remove the mark from the register was exercised by the hearing officer.


The evidence showed that the mark had not been used by the owner since 2002 but it had been used by private individuals who had purchased wine prior to 2002 and subsequently sold it during the non-use period.  There was evidence of a dozen bottles that had been sold by individuals in this way for an average price of $2 to $3 each.

The hearing officer considered that:

  1. The significant delay between the initial purchase of bottles and before they were offered for sale in the marketplace makes the link between the opponent and use of the Trade Mark within ‘the course of trade’ somewhat tenuous. Most of the very limited number of wines were essentially ‘off the market’ for a period of decades before they were sold at minimal prices during a time when the opponent was not promoting the Trade Mark on wine in the marketplace. While the wine was clearly not consumed while it was ‘off the market’ how long can goods be off the market and still remain in the course of trade for the purpose of defeating applications for removal for non-use? This is the question before me. While the wine before me has not been consumed, it has been off the market for many years before it was eventually sold at a public auction for what appears to be less than the wine originally may have been purchased for. The bottles were also sold individually rather than in cases by individuals. Given this substantial time lapse and the low reward for selling, I am not satisfied that those wines did remain in the course of trade over this period.

The hearing officer concluded that this did not amount to trade mark use in the relevant sense.

However, s 101(3) provides a discretion for the Registrar to elect to not remove a mark from the register even if the grounds for removal have been established.

The hearing officer considered that in this case it was appropriate to exercise that discretion (and not order removal) because:

  1. The opponent does have a significant and enduring reputation in its QUEEN ADELAIDE branded wines. It has adopted a refreshed and new label for its wine which is at least deceptively similar to the Trade Mark. The respective trade marks both prominently contain a graphic device depicting Queen Adelaide and contain the words QUEEN ADELAIDE. These are the most prominent and striking features of the respective trade marks. I also note that it is common for traders that have been trading in the marketplace for a long time to update and alter their trade marks to make themselves more marketable in a constantly changing marketplace. Some traders which come to mind are Adidas ® and Kentucky Fried Chicken ®.
  2. The opponent is actively selling its QUEEN ADELAIDE wine under the refreshed label in the Australian market place and individuals are still clearly buying and selling wine bearing the Trade Mark. This is much more than a case of the opponent having a residual reputation in the Trade Mark. The opponent has an active and ongoing reputation in its QUEEN ADELAIDE branded wine and it is selling that wine under a trade mark which is at least deceptively similar to the Trade Mark.
Case Notes, Deceptively similar?, Honest concurrent use, s 44 TMA

CITISALES & LEASING deceptively similar to CITI, CITILOAN

Citigroup Inc v George Sparsis [2017] ATMO 14 (22 February 2017)

Registration was sought for the mark CITISALES & LEASING in relation to various real estate services.

Opposed pursuant to s 44 in reliance on registered marks including CITILOAN, Citimortgage, CITI all registered in relation to financial services or real estate affairs.

Hearing officer considered that the applied-for mark was “coined in the same way as the Opponent’s CITI-[Extension] trade marks and is used or proposed to be used in relation to similar services as those in respect of which the Opponent’s CITI solus trade marks are registered” and that “most people would be immediately caused to wonder if there is some connection between the trade provenance of the similar services offered by both the Applicant under the Trade Mark and the Opponent under its CITI solus and CITI-[Extension] trade marks“.

Evidence did not support prior use (s 44(4) TMA) or honest concurrent use (s 44(3) TMA).

The s 44 ground therefore succeeded.

Case Notes, Deceptively similar?, s 44 TMA

“Zombie” marks cannot be cited in s 44 trade mark oppositions

1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 (21 February 2017)

Registration was sought for the mark HAVANA CLUB ESSENCE OF CUBA in various classes including alcoholic beverages (except beer), entertainment and consultancy services relating to cooking.

Registration was opposed pursuant to ss 42, 44, 61 (TM not an indication of geographic origin) and 62A. No grounds were made out and the application proceeded to registration.

The Hearing Officer found that the s 44 ground was not made out because although the cited mark MATUSALEM EL ESPIRITU DE CUBA was “pending” at the time of the opposed application, by the time of the hearing it had been refused registration (following a hearing).

The HO noted:

In short, what the Opponent wishes me to do is to treat the Refused Application as being a ‘zombie’ application: dead, but still capable of doing damage to a later comer filed during its pendency

Subsections 44(1) and 44(2), he said, are “to be read in the present tense“.  The Opponent did not have a current registration to rely upon and therefore the s 44 ground failed.

Cited marks that are still pending at the time of the hearing will still stand as a barrier to registration, however.   See, for example MHFC Holdings Pty Ltd [2016] ATMO 96.


In relation to s 61, (note that the opponent had had its own mark rejected on this ground – see that decision here) the HO said:

  1. The Opponent’s position here is that because the word ‘Cuba’ appears in its trade marks which were refused registration as a geographical indication that it must follow that, because the word ‘Cuba’ also appears in the Trade Mark, the word ‘Cuba’ must also there be taken to be a geographical indication. I consider that is not necessarily so.
  2. I consider that the correct approach is to consider the Trade Mark as a whole and ask what it is likely to denote to Australians. Here the Trade Mark is comprised of two expressions, firstly the words ‘Havana Club’ and secondly the expression ‘Essence of Cuba’. While it is likely that an Australian seeing the words ‘Matusalem Spirit of Cuba’ on a bottle of rum would understand the expression ‘Spirit of Cuba’ to refer to the spirituous liquors within the bottle as deriving from Cuba, I am not satisfied that an Australian seeing the expressions ‘Havana Club Essence of Cuba’ would be likely to reach the same conclusion….
  1. Here, in the context of goods which are rum, it is obvious that the words ‘Spirit of Cuba’ (and their Spanish equivalent) identify the goods as being spirituous liquors having their origin in Cuba which has a reputation for ‘rum’. In the same context (and in the light of the various definitions of the word ‘essence’ within the Macquarie Dictionary) the expression ‘Essence of Cuba’ does not appear to be amenable to the same understanding.
  2. The expression ‘Essence of Cuba’ thus appears to me to be somewhat indefinite in its denotation. In terms of the definition of ‘geographical origin’, I am not satisfied that the Trade Mark identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
  3. I further note that the Holder has stated that the goods of interest to it contain Cuban rum. The evidence shows that the goods are various ‘bitters’ that are used to make alcoholic drinks and these various bitters contain Cuban rum. The Holder, had it been necessary, has established a defence under subsection 61(2) of the Act.


Case Notes, s 41 TMA - adapted to distinguish?

Name of one of Burkina Faso’s 45 provinces rejected under s 41 TMA because it is a geographic location

Mantra IP Pty Ltd [2017] ATMO 10 (7 February 2017)

Registration sought for the mark BALÉ in respect of various services in classes 39 and 43 relating to holiday reservations, travel and accommodation services.

Opposed pursuant to s 41 TMA on the grounds that the mark is a geographic indicator.

Bale is the name of geographic locations in Croatia and Ethiopia.   Balé is the name of one of the 45 provinces of Burkina Faso which, according to the hearing officer (who appears to have relied on his own Wikipedia searches) is “known for its Deux Balé Forest which is populated by savannah elephant herds“.

Here are some Deux Balé Forest elephants:



The Applicant submitted that “the Registrar can reasonably infer, by virtue of the relative obscurity of this province to an Australian audience, that the number of travellers who would be interested in a holiday would be an extraordinarily small subset of the relevant consumer base.”

It continued “that the number of Australians visiting Balé, Burkina Faso, and therefore the number of consumers who would understand the ordinary signification of the mark to mean ‘Balé, Burkina Faso’, would be very low. The Applicant, a large and sophisticated hotel operator, was not aware of the place until the Hearing Officer brought it to our attention. We were not aware either, and neither was the original examiner. It is submitted it is not a well-known destination for Australians.”

While acknowledging that the applicant’s submissions “have their appeal“, the HO was unpersuaded.  He accepted “that it would be absurd for every geographical location to be held to lack inherent adaptation to distinguish tourism services is persuasive” and that “at this time, Balé is seemingly unknown as a destination for tourists.”

But concluded:

“However, to paraphrase the words of Kitto J from Clark Equipment … if it is reasonable to suppose that tourism services may be provided in connection with Balé in the future, the Trade Mark cannot be considered to distinguish the Amended Services from the services of other traders. I am satisfied that such an assumption is reasonable, and on that basis the Trade Mark is not to any extent adapted to distinguish the Amended Services and, therefore, a ground for rejecting the application exists under s 41.”

The basis for this conclusion seems to be the HO’s reasoning that:

“Africa is a well-known destination for wildlife tourism. Of especial interest to some tourists are ‘the Big Five’ which is a set of five different African animals, one of which is elephants. It is reasonable to suppose that, if it is not already, in the future Balé may well become a recognised destination for those people hoping to catch a glimpse of the elephants that live there. Should this occur, the ordinary signification of Balé, to persons wishing to travel to Africa to see elephants, is that Balé is a geographical location where elephants can be seen.”

The Applicant’s contentions that the mark had acquired distinctiveness were also unsuccessful.

The application was rejected.

Case Notes, Deceptively similar?, s 44 TMA


AEG Ogden Pty Ltd [2017] ATMO 9 (6 February 2017)

Applicant sought registration of the mark ICC Sydney in classes 35, 41 and 43.

Ground of rejection were raised under ss 39, 42 and 44 of the TMA.  By the time of the hearing only the s 44 ground remained in contention.

The cited registrations were the mark ICC INTERNATIONAL COURT OF ARBITRATION and the mark depicted below, both registered for a wide range of goods and services.


Section 44

The HO considered that the compared marks all contained a common element – the letters “ICC” – which is inherently adapted to distinguish and, in each case, the additional elements did not provide any source of distinguishing value.  He concluded therefore that “a member of the public knowing none of the trade marks is likely to be confused by the trade marks simply because of the commonality of the letters “ICC”” and the applied-for mark was deceptively similar to the cited marks.

Evidence of use insufficient to support registration under s 44(3) (honest concurrent use).

Case Notes, Deceptively similar?, s 60, Uncategorized


ATMO case note: Monster Energy Company v Disney Enterprises, Inc [2017] ATMO 2


Relevant classes: 25 (clothing, footwear, headgear etc), 29 (fresh & dried foods), 30 (various processed foods).

Opponent’s marks: MONSTER and MONSTER ENERGY – registered and used in various classes including in relation to carbonated soft drinks.

Grounds of opposition: ss 42(b) and 60 – grounds not established – mark to proceed to registration.

Section 60

Hearing Officer McDonagh set out the following lengthy passage from Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87:

A finding of deceptive similarity in wholly contained trade marks is not automatic and may depend on a number of factors. These include:

(a) The extent to which the shared element has retained its identity as an essential feature of the trade marks (See: Bulova Accutron Trade Mark [1969] RPC 102 (Ch D).

(b) The distinctiveness of the common element/s and the distinctiveness of additional element/s. If the additional element changes the idea of the trade mark, this may point towards a finding that the marks are not deceptively similar.

(c) The nature of the additional element(s) – if the additional element(s) is/are particularly distinctive then the marks will most likely not be deceptively similar, even though they share a common element. And vice versa – if the additional element has a low level of distinctiveness then the marks are more likely to be deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS)

(d) The meaning behind the trade marks – where an additional element changes the meaning of the trade mark or the concept behind it then the trade marks are less likely to be deceptively similar.

(e) The placement, within the trade mark, of the common and non-distinctive elements, including size of text and any other elements may provide a different context and consequently alter the overall impression of the trade mark.

(f) When both the common element and additional element are distinctive – each case will turn on its own facts. See BAREFOOT: BAREFOOT RADLER. E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at 63 per Flick J.

(g) Consideration must be given to the surrounding context of the goods and services, such as methods of sale and common trade techniques. Are customers purchasing goods by name? How are the goods presented? Who are the consumers? (General or specialist?).

The hearing officer considered that in the application of these principles in this case led to the conclusion that the marks were unlikely to be confused.  This was particularly so due to the close association of the Opponent’s marks with sporting teams: “if consumers are involved with a sporting team, event or individual to the extent that they associate and purchase the Opponent’s Goods sold under the Opponent’s Trade Marks because of that association and further seek out goods in Classes 25, 29 or 30 to purchase on the basis of those trade marks, it is less likely that they will confuse the Trade Mark with the Opponent’s Trade Marks.

Section 42(b)

The section 42 ground failed for the same reason as the s 60 ground: “In the present matter the Opponent has failed to establish a ground of opposition under section 60 of the Act. As the test for misleading or deceptive conduct under section 18 of the Australian Consumer Law (‘ACL’) is a more stringent test (at the standard ‘mislead or deceive’) than that for ‘deception or confusion’ under section 60, I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to section 18 of the ACL.”

Case Notes, Deceptively similar?, s 44 TMA


ATMO case note: Screen Technics Pty Limited v S-TECH Holdings Pty Ltd [2017] ATMO 1

Applicant’s mark: SCREENTECH

Relevant class(es):

Goods: Class 9: Electronic displays and signs, illuminated displays and signs; mobile display screens; displays for advertising, traffic control, sporting events and signalling;

Class 11: Lighting apparatus and accessories; LED lights

Opponent’s mark: SCREEN TECHNICS

Registered and used in relation to AV projection screens.

Grounds of opposition: ss 42, 58, 58A, 44, 60.

No grounds established – mark to proceed to registration.

Section 44

Hearing Officer McDonagh held that SCREENTECH and SCREEN TECHNICS are deceptively similar but, given the applicant’s long use of its mark, which pre-dates the priority date of the opponent’s mark and the opponent’s first use of its mark, the mark was registrable under ss 44(3) and 44(4).

Sections 58

This ground was not made out because the parties’ marks were held to be not substantially identical.

Section 58A

This section only applies in relation to marks accepted under s 44(4),  not s 44(3).  In any event, the opponent had not established first use.

Section 60

HO McDonagh considered that the opponent’s reputation was confined to “the audio/visual screen projector market for home theatres, boardroom presentations, and educational and training facilities” whereas the applicant “produces and markets electronic signage that is typically used outdoors or in public places”.  Therefore, the concluded, the opponent had not established the requisite likelihood of confusion.

Section 42(b)

This ground failed for the same reason as s 60.



Case Notes

Hells Angels ordered to give security for costs

The Hells Angels Motorcycle Corporation (HAMC), an Australian company, is the exclusive licensee in this country of a series of trade mark registrations and copyrights owned by the Hells Angels Motorcycle Corporation of the United States.

The trade mark registrations date back as far as 1990 and include the following:

HA death head

Redbubble describes itself as “quite simply the finest and most creative community and marketplace on the interlink“: Redbubble website.  I’m not sure what the “interlink” is but the Australian Financial Review has described the company as providing “an online marketplace where artists and designers can sell their wares” (AFR, 10 November 2015).

It seems that among these wares were some t-shirts and posters bearing HAMC’s registered marks (in which copyright also vested).

HAMC brought proceedings for TM infringement and breach of copyright.  Redbubble sought security for its costs in the amount of $270,000.

In considering the matter, Greenwood J noted that the discretion to order security for costs is, like all good discretions, “broadly based and unfettered“.  Factors to be taken into account include:

  1. the strength of the applicant’s claims and the bona fides of those claims.  (His Honour rejected a line of authority which was said to stand for the proposition that the merits of an applicant’s case ought to be regarded as “neutral” in the analysis);
  2. in circumstances where “a group of individuals … stand behind the special purpose vehicle [ entity incorporated for the purpose of enforcing IP rights], it is a proper exercise of the discretion to require security to be provided because “stakeholders” with a commercial and true beneficial interest in the outcome of the exercise of the rights, ought to bear the burden of ensuring that if their special purpose vehicle is unsuccessful in the assertion of particular rights, the party put to legal costs in defending the claims is, in part at least, secured for those costs.

Greenwood J considered that security should be ordered because the persons standing behind HAMC “ought to be exposed to some proportion of the burden that might arise in the form of a costs order that might be made against HAMC...”

He considered, however, that the amount of security ought to be discounted on the basis of the prima facie strength of the applicant’s case and, in particular, because he considered that a defence that Redbubble indicated an intention to rely upon – that it’s conduct was not infringing because it was analagous to that of iiNet in Roadshow Films Pty Ltd v iiNet Ltd [No 2] (2012) 248 CLR 42 – was unlikely to succeed.

His Honour ordered security in the amount of $50,000.

He noted that this amount “is designed to provide some degree of entirely forwardlooking security to give Redbubble a measure of protection, discounted having regard to the apparent strength of HAMC (Aust)’s contended causes of action in the context of Redbubble’s transactional business model.”

The full reasons can be found here.




Authorised Use, Case Notes

Close but no cigar: s 123 provides parallel-importer with defence to trade mark infringement despite repackaging

A Danish cigar manufacturer (STG) brought proceedings against an Australian parallel-importer (Trojan) for infringement of its registered Australian trade marks HENRI WINTERMANS, CAFE CREME and LA PAZ.  It also alleged misleading or deceptive conduct and passing off.

The essence of the alleged TM infringement was that, after purchasing and importing STG’s cigars, Trojan had repackaged them in order to comply with Australia’s plain packaging legislation.  As part of that repackaging process, STG’s registered marks were placed on the new packaging.  This was done without STG’s consent.  The cigars were then sold to retailers in the new packaging.

It was accepted by STG that the cigars imported into Australia by Trojan were genuine in the sense that they were manufactured by STG.  There was no contention that the Trojan cigars were in any material way different from the “authorised products” that were brought into Australia and sold by STG’s Australian subsidiary.

Is this a prima facie infringement?

Trojan accepted that the use of the STG trade marks on the new packaging was use of those marks “as a trade mark” for the purposes of s 120 of the Trade Marks Act 1995 (Cth) but contended that this was STG’s use, not Trojan’s, because “the connection in trade was between the goods and the manufacturer, not between the goods and Trojan.”

While it may be slightly counter-intuitive (and Allsop CJ considered it was) to conclude that there is prima facie infringement in circumstances where a third party sells goods emanating from the registered owner and bearing that registered owner’s mark, that is the plain wording of s 120 of the TMA.  Allsop CJ pointed out that this conclusion had been reached by at least four Full Courts and was supported by several obiter comments from the High Court.

His Honour therefore concluded that Trojan’s use of STG’s marks on its repackaging was a prima facie infringement.

Does s 123 apply?

Section 123 of the TMA provides:

Goods etc. to which registered trade mark has been applied by or with consent of registered owner

(1)  In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

Note:          For similar goods see subsection 14(1).

             (2)  In spite of section 120, a person who uses a registered trade mark in relation to services that are similar to services in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied in relation to the services by, or with the consent of, the registered owner of the trade mark.

Note:          For similar services see subsection 14(2).

Allsop CJ considered that this provision “applies naturally to parallel importing and second hand goods.”

This case differed from the usual parallel importing cases because of the repackaging: the STG marks had not been applied to Trojan’s repackaging with STG’s consent.

This opened s 123 to alternative readings.

STG contended that since Trojan’s application of the STG marks to the repackaging was without STG’s consent, it’s use of those marks fell outside the protection of s 123.

Trojan argued however that the STG marks had been applied to the the relevant goods with STG’s consent.  They were then removed from the goods and reapplied in the form of the new packaging – but the statutory test was whether the marks had been applied with the owner’s consent.

Allsop CJ considered that Trojan’s construction “more naturally conforms with a purpose in s 123 of protecting as non-infringing use that which does no more than draw a connection between the goods and the registered owner...”  His Honour therefore concluded that s 123 was engaged and Trojan’s use of STG’s marks was non-infringing.

As STG argued in its submissions, this does seem to muddy the waters on the issue of authorised use under s 8 of the TMA – as to which we will learn much more when the Full Court gives its decision in the appeal from Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509 which is listed for hearing on 10 November 2015 before a bench of five judges.

The passing off and misrepresentation claims were also dismissed.

The decision can be found here.