12 February, 2014
Spruson

Australian Trade Mark Office Decisions Summary (November & December 2013)

Australian Trade Mark Office Decisions Summary (November & December 2013)

Whilst most people were off enjoying the summer sun (for those of us in the Southern Hemisphere), we have been busy producing another summary of the Australian Trade Marks Office decisions. This time it is a summer special covering decisions for November and December 2013. We hope that these will provide practitioners and brand owners with a succinct, accessible database detailing current trends in Australian trade marks practice.

November 2013

Pfizer Products Inc v Global Exporters Limited [2013] ATMO 92 Office Stands Firm on Previous VIAGRA Decisions


Pfizer successfully oppose trade mark application for VEGETAL VIGRA (section 60).
Read full article >>


Siltech Pty Ltd v Quantum Corporation [2013] ATMO 93 The QUANTUM of Use.


Siltech able to demonstrate some use to partially rebuke non-use action (section 96).
Read full article >>


Sanofi v Eremad Pty Ltd [2013] ATMO 94
Beware the Power of the Suffix.

Confusion likely between the trade marks CLOVIX 75 and PLAVIX, registration refused (section 60).
Read full article >>


Barton & Guestier S.A.S v Anthony Barton [2013] ATMO 95 BARTON & BARTON & 'A Foreign Surname'.


A common name repeated is inherently registrable as a trade mark and ‘foreign surnames’ are highly memorable, if not, incorrectly recalled (sections 41 and 44).
Read full article >>


Stella McCartney Limited v Wong Kwai Hua [2013] ATMO 96 With a Little Help from my Friends (or my registrations).


Famous fashion designer (and Beatle Baby), Stella McCartney, successfully opposes ST ELLA trade mark (sections 42, 43, 44, 59 and 60).
Read full article >>


Australian Boutique Markets Pty Ltd v Rachael Zelensky
and Jeffrey Zelensky [2013] ATMO 97
It’s sooo BOUTIQUE, Everyone is Doing it!



Australian Boutique Markets unable to produce evidence sufficient to prevent registration of trade mark incorporating BOUTIQUE MARKETS (sections 41, 42 and 60).
Read full article >>


Irene Notaras [2013] ATMO 98 I Remember your Shape, but What is your Name?!


Shape trade mark for a coffee machine found to be ‘stylized and striking’, but evidence of use did not indicate that it was associated with the applicant (section 41).
Read full article >>


Jasco Pty (New Zealand) Limited v Kittrich Corporation [2013] ATMO 99 First CONTACT.


Office does not stick to original decision on CON-TACT v CONTACT in test for similar goods (section 44).
Read full article >>

December 2013

Bickford’s Australia Pty Ltd v Tata Sons L imited [2013] ATMO 100 Those TATAs are not enough.


TATA WATER PLUS deemed to be too close to WATER PLUS (section 44) and a single sale is enough to rebuff non-use (section 92).
Read full article >>


Cash Converters Pty Ltd v Margo Chaille Webber [2013] ATMO 101 EEZ(y)one for the Office.


Res judicata applies to opposition decisions, so again the Office finds that CASH EEZ is too close to CASHIES (section 44).
Read full article >>


Steven R Smith v Car2go GmbH [2013] ATMO 103 I can’t get my CAR2GO!


Partial success for owner of car2go trade mark against registration of CAR2GO, as similar goods/services extended to promotional material (section 44).
Read full article >>


Bugatti GmbH v Bugatchi Uomo Apparel, Inc. [2013] ATMO 102 You say BUGATTI, I say BUGATCHI.


Office bound by earlier Court decision, BUGATTI and BUGATCHI UOMO too similar(sections 44 and 58).
Read full article >>


Ashley Chase Estate Limited v Spanish Foods (Aust) Pty Ltd [2013]
ATMO 104
I didn’t say you could keep it!



A rare successfully pressed bad faith allegation on the trade mark FORD FARM (section 62A).
Read full article >>


Angelica Cota v East Side Clothing Co Pty Ltd [2013] ATMO 105 Proof of Life – This Time no Aussie (Use) to be Found.


Trade mark removed as owner unable to substantiate use in Australia (section 92).
Read full article >>


Apple Inc. v Metropage Pty Ltd [2013] ATMO 106 Apple Monop-I-ly Continues.


Apple successfully opposes registration of IBAD for electronics goods (section 60).
Read full article >>


Ironman 4x4 Pty Ltd v Australian Performance Development Pty Ltd
[2013] ATMO 107
What Shape is a SNORKEL?!



The words ‘SAFARI SNORKEL’ forming part of the trade mark carry a functional shape through to registration (sections 41 and 59).
Read full article >>


Please feel free to get in touch with one of our trade mark professionals with any questions you may have. You can find out more about the breadth of our trade mark services throughout Australia, New Zealand and the South Pacific here.


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