03 November, 2014
Spruson

The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2014] ATMO 93

The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2014] ATMO 93

An application for the mark DESIGN HUNTER in class 35 for an event or exhibition by Indesign Publishing was opposed by The Design Hunter on the grounds of sections 41 and 58.

Indesign Publishing is the owner of 2 prior registrations for the mark DESIGN HUNTER in class 16 and 41. It has used the mark since 2008 in its HABITUS design and architectural magazine and is promoted as “the first magazine for the Design Hunter”. Indesign Publishing has hosted a number of design and architectural events in Sydney and Asia for 10 years.

The Opponent is the owner of a prior registration for the stylised mark THE DESIGN HUNTER in class 35 and 42 for retail and interior design services.

Considering section 41 first, the Hearing Officer stated that Indesign Publishing has not used the mark DESIGN HUNTER descriptively. The collocation “design hunter” alludes to the nature of Indesign Publishing’s services but they are not apt for normal description of an event or exhibition. In addition, it was difficult to see why the words “design hunter” could lack inherent capacity to distinguish Indesign Publishing’s services when it had been previously considered prima facie capable of distinguishing of their goods.

In determining section 58, the Hearing Officer considered the essential question was whether Indesign Publishing’s class 35 services for an event or exhibition was “the same kind of thing” as The Design Hunter’s retail services in the field of interior design.

In finding for The Design Hunter under section 58, the Hearing Officer stated that Indesign Publishing’s design related event was a vehicle to “showcase and retail to consumers” the same kind of thing as The Design Hunter’s retail services in the field of interior design.

The Opposition was upheld.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.


KHAJAQUE KORTIAN

Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Sydney, Australia

DANIEL WILSON

Associate / Trade Mark Attorney
Trade Marks Team
Sydney, Australia


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