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, 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, 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, Deceptively similar?

MALTITOS not deceptively similar to MALTESERS

After a six year hiatus, the Chocolate Malt Balls War resumed last year, with Mars (maker of Maltesers) seeking to prevent Delfi (a competitor) from registering the word MALTITOS as a trade mark: Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065.  Back in 2009, Delfi successfully defended a passing off/trade marks infringement claim (first instance, Full Court) brought by Mars in relation to its Delfi Malt Balls product (depicted below).

In this new matter, Mars was successful in blocking Delfi’s registration of MALTITOS in the Trade Marks Office on s 60 but not on s 44 of the Trade Marks Act 1995 (Cth) (TMA).  Delfi appealed to the Federal Court.  Mars cross-appealed on the s 44 issue.

Jessup J held that MALTITOS is not deceptively similar to MALTESERS.  Further, his Honour held that the Delfi’s use of MALTITOS was unlikely to cause confusion in the market as a result of the reputation vesting in the mark MALTESERS.  He therefore concluded that neither s 44 nor s 60 of TMA presented an obstacle to the registration of Delfi’s mark and set aside the decision of the Trade Marks Office that had found otherwise (on s 60 only).

Delfi had sought registration of MALTITOS in respect of confectionery, biscuits, chocolate, cocoa, and products made from or including chocolate and/or cocoa.  Mars, however, limited its attack to confectionery alone.  To succeed under s 44(1)(a) of the TMA, it had to show that “there is a real likelihood that some people will wonder or be left in doubt about whether confectionery sold or offered for sale under the applicant’s mark comes from the same source as confectionery sold or offered for sale under the respondent’s mark”: at [7].

His Honour considered the environment in which confectionery is typically sold and the nature of the “commercial landscape” which attends such sales – including the facts that confectionery is relatively inexpensive and often bought on impulse.

Consideration was given to both the appearance of the two marks and to their sound as spoken.  His Honour noted that some caution should be exercised when converting word marks to sounds for the purpose of comparison and set out at some length the expert evidence which supported the conclusion that the sounds of the two marks were sufficiently different as to pose little risk of confusion.

His Honour did not accept Mars’s submission that he might take into account the possibility of an error being made by a sales assistant who had misheard a customers request for MALTESERS.

Taking these things into account, his Honour was not persuaded that the relevant marks are deceptively similar.

In relation to s 60 TMA, Delfi accepted that the mark MALTESERS had acquired a relevant reputation in Australia.  Indeed, his Honour accepted that the mark as “a very widespread, solid, reputation in the area of packaged confectionery.” The question, therefore, was whether, as a result of that reputation, Delfi’s use of its mark MALTITOS would be likely to cause confusion.

Delfi contended that the purpose of s 60 “must have been the protection of unregistered marks which had acquired a reputation in Australia, including marks which were not actually used in Australia, and marks which might be registered in relation to good or services other than those in respect of which a particular claim for protection in made.”  His Honour did not accept that the section is so limited.  He held that the “only respect in which s 60 requires an exercise different from that arising under so much of s 44 as relates to deceptive similarity is that the reputation in Australia of the “other” mark must be the reason why the use of the mark proposed to be registered is likely to deceive or cause confusion.  What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.”

So that clears up the relationship between s 44 and s 60.

In any event, while his Honour accepted that MALTESERS was very well known in Australia, the strength of this reputation was not such that Delfi’s use of MALTITOS in respect of confectionery was likely to cause confusion.  Indeed, his Honour considered that the strength of Mars’s reputation vesting in MALTESERS would reduce the likelihood of confusion: at [29].

The ground of opposition based on s 60 TMA was also rejected.  His Honour ordered that the applicant’s mark proceed to registration.

Case Notes, Deceptively similar?

Two yachts, one Anchorage

ANCHORAGE seems like a good name for a funds management business.  Sounds safe and secure.  It also reminds me of Michelle Shocked and Northern Exposure – but that’s just showing my age.  We can also thank Anchorage for Sarah Palin.

No doubt for these reasons, amongst others, the parties in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2015] FCA 882 independently chose the name of that fine town for their unrelated funds management businesses.

The applicant was an Australian company which had operated here since 2007, while the respondents were a US firm called Anchorage Capital Group LLC and its wholly-owned Australian subsidiary, ACPA Pty Ltd.  The respondents’ business started in the United States in 2003 and established a presence in Australia in 2011.

On 26 May 2011, the applicant applied for registration of the marks ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL PARTNERS in respect of various financial services.  Those applications proceeded to registration.

Things became complicated when, in 2013, the applicant moved into the Suncorp building in Sydney’s CBD – the same building that the respondent subsidiary company occupied.  Although the subsidiary company traded under its own name, ACPA Pty Ltd, it described itself on signage in the lobby of the Suncorp building as “ACPA a subsidiary of Anchorage Capital Group LLC“.  After some discussion and debate between the parties, the reference to Anchorage Capital was removed after a few months.

This, however, did not resolve matters.

In the proceeding before Justice Perram, the applicant contended that the respondents’ use of the words ANCHORAGE CAPITAL in the building’s lobby, the use of email addresses in the form and, and other uses of ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP, in relation to the provision of financial services in Australia amounted to trade mark infringment pursuant to s 120(1) of the Trade Marks Act 1995 (Cth).

The applicant also alleged passing off and breach of the Australian Consumer Law.

The respondents cross-claimed to have the applicant’s trade marks removed from the register on the grounds that it was not the owner of those marks at the time of its application.

His Honour accepted that the words ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP were substantially identical or deceptively similar to the applicant’s registered marks;  as were email addresses in the form  Addresses in the form, however, were not deceptively similar and nor was the phrase “ACPA Pty Ltd a subsidiary of Anchorage Capital Group LLC.”

These findings, however, were not sufficient to make out the applicant’s case.  Whilst the marks used by the respondents were deceptively similar to the applicant’s registered marks,  those marks had not been used by the respondents as trade marks in Australia since the priority date.

His Honour said:

There is simply no evidence that either respondent provided any of their funds management services to anyone in Australia after the priority date.  What they have done is trade in their own names.  This is not trade mark use.

Of course, it is both possible and common to use one’s own name as a trade mark.  There is a defence expressly provided for such use when it is in good faith.  Indeed, his Honour went on, in obiter, to say that had he concluded that the respondent parent company infringed the applicant’s marks, he would have considered that s 122(1)(a)(i) of the TMA (the own name defence) would have applied.

His Honour’s finding, however, was that no services had actually been provided by either of the respondents by reference to ANCHORAGE or its variants since the priority date.

His Honour had already found that the first respondent (ACPA Pty Ltd) used the names ANCHORAGE and ANCHORAGE CAPITAL after June 2011 (i.e. after the priority date).  This plainly was not use of its own name.  His Honour considered, however, that this use was to indicate the subsidiary’s connection with its parent and was not use as a trade mark.  It appears that his Honour considered that the subsidiary company was not actually providing any services to anyone in Australia.  The respondents’ contention that the subsidiary was doing nothing but providing advice to its parent was expressly rejected but his Honour noted that “the reality is that [the subsidiary] assisted [the parent] in its transactional work in AustraliaIn the course of doing so it used [ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP]

In obiter, Perram J said that if he had concluded that the respondent subsidiary company infringed the applicant’s marks, he would have considered that s 122(1)(b)(i) would have applied in relation to the use the phrase “ACPA a subsidiary of Anchorage Capital Group LLC” because that use was in good faith to indicate a characteristic of the first respondent’s services, namely, the relationship between those services and the second respondent.  That is, his Honour accepted that “being a subsidiary of another company can be correctly described as a characteristic” for the purposes of s 122(1)(b)(i) of the TMA.

The passing off and ACL claims were dismissed.

The cross-claim appears likely to succeed but is not finalised.  On the basis of a small amount of use of the marks ANCHORAGE and ANCHORAGE CAPITAL by the respondent parent company in Australia in 2007, his Honour accepted that the applicant was not the owner of its marks at the time it applied for registration and that the discretion to remove them from the register was enlivened.  His Honour considered himself bound by earlier Full Court authority to conclude that the power to remove was discretionary – although he preferred the view of an earlier single judge decision that it was not.  Submissions are to be filed on whether that discretion should be exercised and an decision on that issue will follow in due course.

It appears that no party raised the issue of whether ANCHORAGE being a geographic location presented a barrier to registration in the first place.

“…you know you’re in the largest state in the union
When you’re anchored down in Anchorage”

Case Notes, Deceptively similar?

It’s Colonel Mustard in the conservatory with the candlestick: Qludo is deceptively similar to Cluedo

The applicant applied for the mark shown below in relation to:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus

Class 25: Clothing, footwear, headgear.


The Opponent was the registered owner of three marks all comprising the word CLUEDO in the following classes:

Regn No.
Priority Date
Class 28: Games and playthings including board games
Class 9: All goods in this class including video cassette games, video games & computer programmes for playing games
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; including note pads
Class 25: Clothing, footwear, headgear

Hearing Officer Kirov considered that:

“here the Opposed Mark is on the face of it phonetically identical to the CLUEDO mark and I do not think that the stylization of the Opposed Mark or the different initial letters of the parties’ marks are sufficient to significantly reduce the risk of confusion amongst potential consumers. In this regard I note the words of Lord Radcliffe in De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106.

…that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.”

The decision can be found here.