Doric Management opposed the registration of the below trade mark filed by Loukat Holdings covering stone benchtops and counters in Class 19, the installation of such items in Class 37, and processing stone services in Class 40.
The opponent is the owner of two prior Australian trade mark registrations (shown below) for, amongst other items, building and construction services in Class 37.
Both of the opponent’s prior registrations were cited against the applicant’s trade mark, however, this citation was overcome through evidence of the prior and honest concurrent use.
The opponent led evidence of its use and reputation in the ‘DORIC and Column’ trade mark since around 1989, as well as significant revenue and advertising expenditure. Meaning that the Hearing Officer was able to infer a reputation in the opponent’s trade marks. As the relevant trade marks are, in the Hearing Officer’s view, substantially identical, and cover the same (and similar) services, the Hearing Officer found that consumer deception and confusion was likely at arise.
The section 60 ground was made out. The Hearing Officer rejected the applicant’s trade mark noting that the view that was expressed by Kenny J in in McCormick & Company Inc v McCormick, that ‘44(3) does not provide an exception to section 60’. In the Hearing Officer’s view, this carried also to section 44(4).
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.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team