Sumol+Colpal Marcas, S.A. v Sumo IP Holdings Pty Ltd [2018] ATMO 166
Sumol+Colpal Marcas S.A. (“Sumol”) has successfully defended a non-use removal proceeding against its registration by relying on use of the registered trade mark with additions or alternations that do not substantially affect its identity.
The Removal Applicant, Sumo IP Holdings Pty Ltd (“Sumo IP”) had sought removal of the registration for the mark on the basis of non-use.
In defending the removal action, Sumol filed evidence of use of a stylised version of the word mark SUMOL on beverage packaging and use of SUMOL PINEAPPLE, SUMOL ORANGE and SUMOL PASSIONFRUIT on invoices relating to the registered “coolers and fruit juices” goods. Sumo IP argued that Sumol could not rely on that use as the marks as used were too different to its registered trade mark.
The Delegate, however, disagreed. In comparing the marks as used to the registered mark, he noted that there are noticeable differences between those marks but found that the differences do not necessarily preclude the marks from being substantially identical. Looking at the total impression of resemblance between the registered mark and the marks as used, he found that the word SUMOL is the striking and distinctive element in each mark and is likely to be the element by which consumers will recognise and connect the goods offered under these marks with the registered owner. The additional elements included in the marks as used and the descriptive nature of the word PORTUGAL in the registered mark does not substantially affect the identity of the marks on a side by side comparison.
As a result, Sumol successfully rebutted the allegation of non-use by establishing use of the registered mark, with additions or alterations that do not substantially affect its identity during the relevant non-use period. The registration is to remain on the Register.
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