15 October, 2014

Australian Trade Mark Office Decisions Summary July and August 2014

Australian Trade Mark Office Decisions Summary July and August 2014

Each month we produce a summary of the Australian Trade Mark Office decisions to provide practitioners and brand owners with a succinct, accessible database detailing current trends in Australian trade marks practice.

NetApp Inc v Trading Reference Australia Pty Limited [2014] ATMO 61
NetAppY, Jan!

Wholly contained trade mark not too close to prior mark (sections 44, 60 and 42).
Read full article >>

Omega SA (Omega AG) (Omega Ltd) v Guru Denim Inc. [2014] ATMO 62
Not the end of ‘U’

Omega unsuccessful in arguing that ‘U’ device is upside down Omega(sections 42(b), 44, 58 and 60).
Read full article >>

Lifestyle Solutions (Aust) Ltd v Care Connect Ltd [2014] ATMO 63
I really did do it MY WAY

‘My Life, My Choice, My Way’ and ‘MY LIFE, MY CHOICE, MY FUTURE’ not substantially identical (sections 58 and 60).
Read full article >>

Universal Health International Pty Ltd v Universal Protein Supplements Corporation [2014] ATMO 64
Mr UNIVERSE battles with supplements

acceptance on the grounds of honest concurrent use upheld (section 44 and 60).
Read full article >>

A G Professional Hair Care Products Ltd v Geagroup Invest SRL [2014] ATMO 65

opposition successful under section 44, Australian designation to proceed to protection for limited goods (sections 59 and 44).
Read full article >>

Discount Drug Stores Pty Ltd [2014] ATMO 66
Throwing Some Shade

colour application fails largely on inconsistent use of exact shadingapplied for(section 41).
Read full article >>

Hearst Communications Inc v H.A.G. Imports Pty Ltd [2014] ATMO 67

Cosmopolitan Magazine unable to prevent registration of COSMOPOLITAN for home wares (sections 44, 60, 59, 42(b) and 58).
Read full article >>

Cantarella Bros Pty Ltd v Espresso Enterprises Pty Ltd [2014] ATMO 68
A Bitter (bad faith) Coffee Mix

Cantarella able to prevent registration by a competitor of a tag line it has used in advertising ‘WE KNOW COFFEE’ (section 62A).
Read full article >>

Fairmont Hotel Management L.P. v Schwartz Family Co. Pty Limited. [2014] ATMO 69
Two Hotels, One Trade Mark, FAIR Result?

Fairmont Hotel prevents registration of FAIRMONT in Australia, despite not operating hotels in Australia (section 60).
Read full article >>

MCD Asia Pacific LLC v Coffee Cartel Pty Lt [2014] ATMO 70
McFoodMcOpoly. McDonald’s continues to assert monopoly over ‘Mc-‘ trade marks (section 60).
Read full article >>

Sleepcraft Distributors Pty Ltd v Fisi Fibre Sintetiche [2014] ATMO 71
SOFT or THERM Mattress?

Sleepcraft unable to assert monopoly over ‘THERM-‘ prefixed marks (sections 42(b), 44, 59 and 60).
Read full article >>

Enagic Australia Pty Ltd and Enagic Co., Ltd v Horizons (Asia) Pty Ltd [2014] ATMO 72
A ‘healthy’ View on Bad Faith?

Bad faith not fully established, as TMO appears to step back from previous bad faith progress (section 62A).
Read full article >>

WADREF Humified Compost Pty Ltd v Collison& Co. [2014] ATMO 73
Fishy Smelling Manure.

Non-use rebuffed with applicant leading evidence of bad faith (section 92).
Read full article >>

Facebook, Inc. v Northsword Pty Ltd. [2014] ATMO 74
FACE it we are not FRIENDS.

Facebook successfully opposes FRIENDBOOK (section 60).
Read full article >>

PUMA SE v Bangkok Rubber Public Company Limited [2014] ATMO 75 0
Cat Fight!

Puma unable to prevent registration of ‘wildcat’ image trade mark (sections 44 and 60).
Read full article >>

Accolade Wines Australia Ltd, Pernod Ricard Winemakers Pty Ltd, Treasury Wine Estates Ltd and Australian Vintage Limited v Delegat’s Wine Estate Limited [2014] ATMO 76
Bottled it!
Application for shape of wine bottle and labels initially accepted on evidence of use, now rejected on same evidence (section 41).
Read full article >>

Industrial Knitted Products Pty Ltd [2014] ATMO 77
EXCELNET Revocation.

Decision to revoke acceptance upheld as prior mark should have been cited (section 38)
Read full article >>

Bauer Consumer Media Ltd and Bauer Media Pty Ltd v Evergreen Television Pty Ltd. [2014] ATMO 78
DISCOVER the True Owner.

Issue of ownership of a trade mark coined whilst under employment tested (section 58).
Read full article >>

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