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 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.



Honest concurrent use, s 44 TMA

What on earth is honest concurrent use?

One of the grounds of opposition to registration of a trade mark is provided by s 44 of the Trade Marks Act 1995.  It’s probably the most obvious one: you can’t register a mark if someone else has already registered it in respect of the same or similar goods and services.  There’s a bit of nuance to it but that’s pretty much it.  There are two exceptions however.  One is provided for applicants who have used their mark since before the other trader commenced use of the cited mark – that’s the s 44(4) exception which is usually called continuous prior use.  The second exception is provided for applicants who have used their mark concurrently with the owner of the cited mark – this is the “honest concurrent use” exception.

Section 44(3) of the TMA provides the detail:

(3)  If the Registrar in either case is satisfied:

                     (a)  that there has been honest concurrent use of the 2 trade marks; or

                     (b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Honest concurrent use has not had much of a run lately.  It was pretty much killed off by Justice Kenny in McCormick & Co Inc v McCormick (2000) 51 IPR 102 when she said “s 44(3) of the Act does not provide an exception to s 60“.  From then on, as long as an opponent had sufficient reputation and confusion was likely, honest concurrent use was no use to an applicant.

In the recent case of Apax Partners Midmarket v Apax Partners LLP [2015] ATMO 30, the opponent relied only on s 44 (and not on s 60).  Honest concurrent use was in issue.  Some “uncontroversial propositions” were set out by the hearing officer.  These included:

  1. The discretion conferred on the Registrar is a broad one;
  2. Honesty of the applicant (in a commercial sense) remains an important consideration;
  3. Whether the applicant knew of the opponent and its use of its trade mark is not determinative – the question is whether the applicant might have had a reasonable good faith expectation of pursuing registration based on its concurrent use or other circumstances;
  4. Even a high likelihood of confusion is not an automatic disqualification;
  5. The comparison of uses is relative in the sense that the weight to be attributed to the applicant’s use will vary depending on the extent of the opponent’s use.

The applicant was successful. The hearing officer accepted that the requirements of s 44(3) were made out despite the facts that the marks used by the applicant and opponent were identical and they operated in the “same sphere”.  It appears that the opponent was unable to demonstrate significant reputation vesting in its mark and it is assumed that this is the reason the application was not opposed under s 60.

While s 44(3) is often trumped by s 60, there are occasions where s 60 will not apply (no reputation, no likelihood of confusion) and so it must not be forgotten.