26 September, 2014
Spruson

Franklins Pty Ltd v No Frills Pty Ltd [2014] ATMO 55 (13 June 2014)

Franklins Pty Ltd v No Frills Pty Ltd [2014] ATMO 55 (13 June 2014)

This case concerned a non-use application by a Western Australian company which manufactured and sold fertiliser products under the name NO FRILLS FERTILISERS and by reference to the logo below:

franklin pty ltd

The removal Applicant was the owner of a pending application in respect of the words NO FRILLS FERTILISERS.

The owner of the trade mark registration subject to the non-use application was Metcash Trading Limited, however the notice of opposition was filed by Franklins Pty Ltd. The registration was in respect of the words NO FRILLS for class 1 chlorine powder packs and other swimming pool chemicals in this class; garden manure and chemical products used in gardens; fertilisers and potting preparations.

It was submitted that the sale of salts and detergents (for use in other contexts such as table salt for food or washing detergent) was a use of the goods under the trade mark, however the Delegate did not accept this submission, saying, “[i]t may be that some people intentionally put tea, coffee and/or sugar in their swimming pools, thereby potentially making them swimming pool chemicals but this seems unlikely”.

The Delegate then considered whether the geographical limitation was available under the Act at s 102. That section requires that the removal Applicant be the registered owner of the mark which is similar to the mark being examined, but being the owner of an unregistered mark that may properly be registered, will also satisfy the section. The Delegate considered that in this context, ‘may properly be registered’ is effectively enlarged to mean ‘may properly be registered including subject to any appropriate limitations ordered under this section’.

The Delegate found that the section applied and that there had been no use of the mark in the non-use period in respect of certain of the goods listed under the registration in Western Australia. The removal Opponent submitted the discretion allowed under the Act should be exercised to reject the limitation sought by the removal applicant. The Delegate rejected this submission and held that, although there had been use and there is clearly not an intention to abandon the trade mark generally, that there had only been a handful of uses in Western Australia in the thirty years that the trade mark had been registered.

The Delegate ordered that the trade mark remain on the register subject to the limitation “Registration of this trade mark does not extend to the State of Western Australia”.

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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