Trade Marks Update IPSANZ Seminar

Trade Marks Update IPSANZ Seminar
Adelaide 15 February 2017 Perth 16 February 2017 Ed Heerey QC, Sydney & Melbourne Ben Gardiner, Brisbane 1

Scoreboard – State of Origin
Trade mark decisions in last 12 months High Court appeals (including special leave applications): Nil Full Federal Court appeal decisions: 3 NSW: 2 VIC: 1 Federal Court trial decisions: 11 NSW: 5 VIC: 4 SA: 1 (plus 1 interlocutory injunction) WA: 1 2

Skyy Spirits LLC v Lodestar (2015) 112 IPR 328
Latest bout in worldwide squabble between WILD TURKEY Bourbon and WILD GEESE Irish Whiskey See, eg, Austin, Nichols v Lodestar [2012] 202 FCR 490 Perram J: “The underlying antipathy seems driven by the possibility that not everyone might distinguish a wild goose from a wild turkey.” “Wild geese” is a turn of phrase sometimes used to refer to the Irish diaspora 3

2000: WG Irish Whiskey registered WILD GEESE Around 2000: small vineyard operated by Adelaide barrister Patrick O’Sullivan QC began selling WILD GEESE wines 2005: O’Sullivan applied to register WILD GEESE obstacle: 2000 registration by WG Irish Whiskey O’Sullivan applied to remove WG Irish Whiskey’s TM S 92(b): 3 years non-use Discovered that WT Bourbon had also applied under s 92(b) 2007: O’Sullivan and WT Bourbon agreed: O’Sullivan’s WILD GEESE wine TMs assigned to WT Bourbon WT Bourbon licensed TMs back to O’Sullivan for $1 in perpetuity WT Bourbon took over O’Sullivan’s non-use removal application 4

2012: WT Bourbon finally succeeded in removing WG Irish Whiskey’s WILD GEESE TM for non-use: Austin, Nichols v Lodestar 202 FCR 490 WT Bourbon then secured registration of WILD GEESE and WILD GEESE WINES Present litigation: WG Irish Whiskey applied to remove WT Bourbon’s registrations of WILD GEESE and WILD GEESE WINES for 3 years non-use O’Sullivan was the only party using WILD GEESE in the relevant period Key question: was O’Sullivan’s use “authorised” by WT Bourbon? s 7(3): authorised use of TM is taken to be use of TM by owner s 8: “authorised” use of TM is use under control of owner 5

Perram J: O’Sullivan’s sales of WILD GEESE wines totalling $3,465, $2,479 and $5,538 in relevant 3 years were modest but nevertheless use of the TM On the facts, WT Bourbon exercised no actual control over O’Sullivan’s use of the WILD GEESE TMs, or quality control over his wine: “The licence agreement was not intended by the parties to it to deliver anything but the appearance of control to the Wild Turkey interests” However, a mere theoretical possibility of contractual “control” is sufficient to constitute authorised use for purposes of s 8 Perram J disagrees strongly with this principle, should be “actual control” [detailed analysis set out for review on appeal?] But, bound by Full Court: Asia TV v Yau (No 2) (2000) 49 IPR 264 WILD GEESE TM thus used; Court has no power to remove. 6

Lodestar Anstalt v Campari America LLC [2016] FCAFC 92
Appeal to Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ: 5-member Court convened in case it became necessary to consider whether Full Court decision in Asia TV v Yau was wrong Lead judgment by Besanko J – all other judges agreed Greenwood, Nicholas and Katzmann JJ added further observations, generally focussed on the facts of the case 7

Besanko J, allowing the appeal: O’Sullivan’s use of WILD GEESE was not controlled by, and thus not “authorised” by, WT Bourbon There is no general rule that a mere ability or power to exercise control is sufficient to demonstrate control: Holly Hobbie [1984] RPC 329 Use of TM under a bare licence is not sufficient to establish the necessary connection between the TM owner and the goods; some form of control had to be established and mere ability or power to control was probably insufficient: McGregor Trade Mark [1979] RPC 36 Full Court in Yau did not actually hold that a mere theoretical possibility of contractual control was sufficient to constitute an authorised use That case in fact involved a high degree of control by the TM owner 8

Besanko J, allowing the appeal: Meaning in s 8 of “under the control of” is informed by the principle that a TM must indicate a connection in the course of trade with the registered owner The connection may be slight, but that does not mean that the control may be slight Control in s 8 means actual control in relation to the use of the TM and actual control in relation to the TM from time to time Control involves questions of fact and degree There must be control as a matter of substance A licence agreement may contain such detailed quality standards with which the licensee may faithfully comply, without the need for the owner to give instructions from time to time 9

Besanko J, allowing the appeal: The Licence Agreement, in practical terms, had no effect on the way in which O’Sullivan conducted his business The quality control provision in the Agreement was that the wine be of a sufficient standard to obtain the AWBC’s approval for export – a very low standard that had no effect on Mr O’Sullivan’s wine making At no time in the 3-year period did the the TM owner contact O’Sullivan about his wine or exercise its rights under the Agreement to request samples or testing O’Sullivan’s use was not an authorised use within s 8 It follows that WT Bourbon made no use of its registered TM within the 3 year period 10

Scandinavian Tobacco Group Eersel BV v Trojan Trading PL (2015) 115 IPR 246
STG owns TMs CAFÉ CRÈME, HENRI WINTERMANS and LA PAZ for tobacco products STG makes cigars bearing these TMs in Holland and Belgium STG’s cigars pre-destined for Australia are pre-packaged by STG to conform with Australian tobacco plain packaging laws Trojan imports into Australia cigars made by STG and bearing the TMs but in packaging for other markets, not compliant with Australian plain packaging laws Trojan removes the cigars from STG’s original packaging and transfers them individually to retail plain packaging that it sources independently, bearing STG’s TMs Trojan does not have STG’s consent to place the TMs on the packaging 11

Allsop CJ, rejecting Trojan’s argument that it did not use or infringe the TMs: “absent s 123 being engaged, the mere sale of goods already marked by the registered owner (a fortiori if a mark is applied by someone other than the registered owner) would be an infringing use of the mark by the importer” (citing 4 Full Court decisions: Transport Tyres, E & J Gallo, Paul’s v Sporte Leisure, Paul’s v Lonsdale) the process of re-packaging involved applying the TMs in relation to the cigars (on the boxes containing them) for the purposes of s 9(1)(b)(i) that process and sale to retailers were use of the TMs “upon, or in physical or other relation to, the goods” (s 7(4)), which is infringement unless s 123 applies 12

Allsop CJ, on Trojan’s defence under s 123: STG’s argument: relevant application of the TMs was by Trojan, during its repackaging process, which had no consent of STG Trojan’s argument: relevant application of the TMs was STG’s original application during its manufacturing process, and Trojan’s repackaging was merely to conform with plain packaging legislation Allsop CJ preferred Trojan’s argument 13

Scandinavian Tobacco Group Eersel BV v Trojan Trading PL [2016] FCAFC 91
Besanko, Yates and Nicholas JJ, on use as a TM by a reseller: Trojan used the TMs as TMs on the repackaged goods it sold The position is as stated by the Full Court in Transport Tyres, E & J Gallo, Paul’s v Sporte Leisure, Paul’s v Lonsdale Unless s 123 is engaged, the mere sale of goods already marked by the registered owner would be an infringing use of the mark by the reseller 14

Besanko, Yates and Nicholas JJ, dismissing appeal re s 123 TMA: s 123 gives an express statutory footing for the Champagne Heidsieck principle - that principle has no broader operation beyond s 123 Allsop CJ correctly accepted Trojan’s construction of s 123 which directs attention to any prior application of the TM on or in relation to the goods that occurred by or with the consent of the registered owner If the registered owner has applied its TM to the goods, it will be open to another person to purchase the goods, remove the TM and then re- apply it for the purposes of resale 15

Besanko, Yates and Nicholas JJ, dismissing appeal re s 123 TMA: When interpreting s 123, it is important to keep in mind that a TM may be used in many different ways which do not involve physically applying the TM to goods, eg in advertising, invoices, conversations If s 123 is to operate to reflect the Champagne Heidsieck principle it must be interpreted in a matter allowing application to the wide variety of circumstances in which a TM may be used in relation to the goods If a retailer acquires packaged goods to which a TM has been applied by its registered owner at manufacture, s 123 provides a defence to infringement if it creates signage or advertising reproducing the TM S 121 allows TM owner to display on goods a notice prohibiting certain acts, including applying the TM after the packaging has been altered, so TM owner in STG’s position has alternative protection 16

Aristocrat Technologies Australia PL v Global Gaming Supplies PL (2016) 329 ALR 522
Copyright and TM case concerning gaming machines Convoluted litigation history: trial, appeal, remitted trial, second appeal Full Court found that the Respondents acted in concert to export for sale gaming machines which incorporated: unauthorised compliance plates that bore the word ARISTOCRAT unauthorised Aristocrat game software TM appeal turned largely on evidentiary issue: Full Court held that was there sufficient basis to find that the machines exported by the Respondents had fake ARISTOCRAT compliance plates Primary judge erred in finding that there was no evidence of such fake plates and thus that it was impossible to apply the test of substantial identity from Windeyer J in Shell 17

Aristocrat Technologies Australia PL v Global Gaming Supplies PL (2016) 329 ALR 522
Both trial judge and Full Court rejected Respondent’s contention that there could be no use of any TMs “as a TM” because none of the marks was used by the Respondents to indicate a connection between the goods and any of the Respondents Full Court: in the context of this case, the ARISTOCRAT mark was used so as to indicate a connection in the course of trade between the impugned machines and the Respondents who affixed the mark Irrelevant that the Respondents may have intended to use the mark to convey an association between the machines and the Aristocrat parties What is important: ARISTOCRAT mark was used as a “badge of origin” so as to indicate that the gaming machines had been made by or with the authority of the person who affixed the mark Use of fake compliance plates and counterfeit software is like any other case where registered TM is applied to counterfeit goods 18

Flexopack S.A. Plastics Industry v Flexopack Australia PL (2016) 118 IPR 239
Applicant, a Greek company, owns registered TM for thermoplastic polymers (for packaging) used for preserving cheese and other foods Unrelated Australian Respondent sells a similar product locally, also using FLEXOPACK Applicant sued for TM infringement, passing off and misleading or deceptive conduct Respondent cross-claimed for: revocation under ss 41 and 88 for lacking capacity to distinguish removal under s 92 for non-use as a TM 19

Beach J, finding TM infringement: Respondent used FLEXOPACK as a TM in domain name the title of its webpage “Flexopack Australia” sign off and addresses eg business cards, invoices and quotations packaging advertising Mere registration of the domain name is not use as a TM but the domain name is used by the Respondent as a vehicle to advertise its products FLEXOPACK (AUSTRALIA) deceptively similar to 20

Beach J, finding TM infringement: Respondent did not make out defence of use of its own name in good faith (s 122(1)(a)): use of an abbreviation of a name cannot be protected if it increased the likelihood of deception or confusion to drop “Australia” from “Flexopack Australia” cannot be said not to increase the likelihood of confusion an experienced business person acting in good faith would have conducted inquiries including a search of the trade marks register even if the Respondent initially adopted its name in good faith, its use was no longer in good faith after being put on notice of the Applicant’s rights and the potential for real confusion 21

Beach J, finding TM infringement: Respondent not entitled to defence that it would obtain registration of its TM (s 122(1)(fa): Applicant’s prior TM would block registration under s 44(1) honest concurrent use would not apply under s 44(3)(a) registration would also be blocked by opposition under ss 60 and 42(b) 22

Beach J, rejecting cross-claims: Applicant has used its TM – no basis to remove for non-use under s 92(4)(b) No basis to cancel under ss 41 and 88: FLEXOPACK is not descriptive of any goods It is artificial to disassemble the word into FLEXO and PACK to look for a directly descriptive meaning “If there was something called a ‘flexopack’ then the evidence did not reveal precisely what such a thing might be.” FLEXOPACK is an invented word and inherently adapted to distinguish Registration would have also been supported under s 41(5) 23

Playgro PL v Playgo Art & Craft Manufactory (2016) 117 IPR 489
Applicant owns reg TM PLAYGRO for games and playthings Respondents are Hong Kong companies members of Playgo group of companies in Hong Kong and China which makes PLAYGO toys for sale worldwide PLAYGO toys sold in Myer and Woolworths stores in Australia Applicant sued Respondents for TM infringement Respondents denied any use of PLAYGO TM in Australia, given that: the goods were purchased from Respondents in Hong Kong by Hong Kong registered companies goods were delivered to those purchasers in China title to and control of goods passed to those purchasers in China 24

Moshinsky J, finding TM infringement: is not substantially identical but is deceptively similar to PLAYGRO 25

Moshinsky J, finding TM infringement: Respondents used PLAYGO device as a TM in Australia The reasoning in Estex was that an overseas manufacturer continued to use its TM after property in the goods had passed to the Australian retailers, so long as the goods remained in the course of trade Although Estex and Gallo concerned removal for non-use, consideration of “use” of a TM in those cases is not limited to that context, and is equally applicable to an infringement context Here, when Respondents sold the goods they knew that the goods were to be sold in Australia Respondents used the PLAYGO device as a TM in Australia as a badge of origin to indicate a connection between goods and Respondents TM used by Respondents until ultimate sale to customers in Australia 26

Moshinsky J, finding TM infringement: The conclusion that the Respondents used their TM in Australia does not depend on the TMA having extra-territorial operation Rather, it is based on an understanding of what amounts to “use” of a TM in Australia Respondents submitted that it cannot be correct that every foreign company worldwide is liable for TM infringement if its marked goods are present in Australia, no matter how long the chain of international trade In this case, however, the Respondents were aware that the goods would be sold in Australia It is not necessary to consider whether a foreign company would be liable for infringement if this were not the case 27

Stone & Wood Group PL v Intellectual Property Development Corporation PL [2016] FCA 820
S&W’s registered TM: IPDC’s THUNDER ROAD PACIFIC ALE: S&W sued IPDC for TM infringement, misleading conduct and passing off 28

Moshinsky J, dismissing TM infringement claim: PACIFIC and PACIFIC ALE are not deceptively similar to the reg TM Dominant and essential feature of the reg TM is STONE & WOOD Reg TM also features the & symbol and HANDCRAFTED on top PACIFIC ALE is not an essential feature of the reg TM – smaller print and subsidiary size and positioning to STONE & WOOD 29

Moshinsky J, upholding cross-claim for groundless threats: Insufficient for S&W to establish a bona fide belief that acts of the threatened person constituted infringement; it must establish infringement S&W did not begin a TM infringement action against the threatened person (Elixir) with due diligence within the meaning of s 129(5) Threat made 26/2/15, cross-claim for groundless threats filed 18/6/15, infringement action brought thereafter But for the cross-claim for groundless threats, it is doubtful whether the TM infringement claim would have been brought at all 30

Qantas Airways Ltd v Edwards [2016] FCA 729
Edwards applied for logo TM for clothing, footwear, headwear, shirts and t-shirts: TMO rejected opposition by Qantas Qantas appealed to Federal Court Yates J, rejecting opposition under s 44: Qantas’s TM registered in respect of advertising, marketing and merchandising services: Those services not “closely related” to clothing goods There is nothing that makes (eg) merchandising services related to (eg) clothing beyond the fact that clothing is capable of being, along with a vast range of other goods, the subject of merchandising 31

Yates J, rejecting opposition under s 44: S 44 ground can be disposed simply on the finding that the goods and services are not closely related However, even without that finding, s 44 ground fails for lack of deceptive similarity The stylised kangaroo is a prominent element of each mark It would, however, be an error to focus on each kangaroo element to the exclusion of other elements of the respective marks Must take into account the important triangular element of Qantas’ TM, which puts the kangaroo in a memorable visual setting The t-shirt element of Edwards’ TM is a very important element and a significant point of distinction 32

Yates J, rejecting opposition under s 60: Qantas argued that Edwards TM would be confused with either of on these TMs: Edwards’ TM: Qantas relied on widespread use, including sponsorship activities and the use of its TMs on team uniforms, t-shirts and other clothing Not persuaded of likelihood of confusion, even re Qantas’ TMs without triangle element, due to important t-shirt element of Edwards’ TM 33

Yates J, rejecting opposition under s 60: Qantas relied on widespread use, including sponsorship activities and the use of its TMs on team uniforms, t-shirts and other clothing No significant role played by consumer awareness of brand evolution or extension evidence of use of Qantas’ TMs on clothing was plainly for endorsement purposes not persuaded that Qantas’ TMs have reputation for clothing etc goods in their own right 34

Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939
1999: DSI applied for OZEMITE for spreads, yeast extracts etc 2003: registration achieved 2001: Ramsey applied for AUSSIE MITE, DSI opposed 2006: opposition dismissed, registered under s 44(3)(b): 70 IPR 428 2011: Ramsey applied to have OZEMITE removed for 3 years non-use no sales of any OZEMITE product by that time DSI claimed an “obstacle” prevented use: difficulty in sourcing spent brewer’s yeast because Kraft had contracted all available supply from Australian brewers to make VEGEMITE 2012: DSI commenced selling OZEMITE product 35

2014: TMO decided to remove OZEMITE for non-use: 105 IPR 452 DSI appealed non-use removal decision to Federal Court Ramsey also applied to cancel OZEMITE and DSI applied to cancel AUSSIE MITE but both parties agreed to ask the Court to rule first on the appeal from the non-use removal decision 36

Katzmann J, finding use as a TM in the statutory period: Despite no product being available for sale during the non-use period, DSI used OZEMITE as a TM in two instances of “pre-launch publicity”: First instance: Mr Smith’s appearance in August 2010 in a skit on the ABC’s “The Chaser” political comedy TV program Wearing OZEMITE t-shirt Surrounded by Dick Smith Foods products 37

Katzmann J, finding use as a TM in the statutory period: Second instance of TM use: interview of Mr Smith on Adelaide radio 5AA in March 2011 about Woolworths’ decision to continue to stock Dick Smith Foods product, in which he said: “. . . We’re also looking You remember we were going to bring out Ozemite? The Ozemite, to compete with Vegemite, because Vegemite should be called Yankeemite because it’s owned in America, you know they try to make out its Australian no it’s American, and I’ve been trying to work on Ozemite well I am now committed, we are going to bring out Ozemite because, see, Vegemite has now changed: they’ve got Cheesy-Bite, They’re making all these changes, well I want to go back to the original taste.” 38

Katzmann J, finding use as a TM in the statutory period: Rejected Ramsey’s argument that there can be no TM use unless there is an “occasion of trade” in respect of “vendible articles” involving at least a single act of sale High Court’s reference in Gallo to “vendible goods” is not limited to goods actually sold, but extends to goods capable of being sold, or “marketable” High Court in Estex: use is not limited by any concept of the physical use of a tangible object The “course of trade” is not confined to sales but includes merchandising, advertising and promotion etc Gallo does not exclude from “use as a trade mark” all steps antecedent to a sale or the offering for sale of the goods 39

Katzmann J, finding use as a TM in the statutory period: Evidence went well beyond “preliminary investigations” and showed that DSI had “an objectively ascertainable commitment” to produce a “vendible” OZEMITE product OZEMITE product remained under development during the non-use period and DSI was intent on bringing it to market, notwithstanding various setbacks and frustration Considerable funds had been invested in its development, well over $100,000 What matters in the 2010 and 2011 broadcasts is that the TM was being used to distinguish the prospective product from the products of others 40

Katzmann J, obiter, if wrong about finding use of TM: There was no “obstacle” to the use of the TM within s 101(3)(c) in difficulty in sourcing spent brewer’s yeast; or difficulty in developing formula to taste like Vegemite [Note criticism of Drummond J’s reasoning in Woolly Bull] 41

Katzmann J, obiter, if wrong about finding use of TM, would have exercised discretion not to remove TM, because: DSI was not idle in the 8 year period since registration The above difficulties provide a credible explanation for the delay DSI had a genuine intention and commitment to use the TM TM has residual reputation from long albeit sporadic promotion Sales since 2012 have been substantial DSI’s interests favour the retention of the TM on the register Mr Ramsey adopted AUSSIEMITE when he knew of DSI’s OZEMITE application, to capitalise on consumer confusion Removal would lead to confusion, and infringement by DSI Consumers would mistake AUSSIEMITE for OZEMITE 42

Katzmann J, obiter: There is likely to be less confusion if the ozemite mark remains on the Register, than if it is removed. The extent of publicity generated by Mr Smith over many years, including the extraordinary publicity given to the Ozemite name at the time of its conception, suggests that for many years to come a product which has the identical sound will be associated, at least in the minds of a not insignificant number of people, with Mr Smith. The best way of dispelling the notion that aussie mite is a Dick Smith product is to enable the two products to compete for attention on the supermarket shelves where consumers can see clearly which is the Dick Smith product and which the Ramsey one. 43

Samuel Smith and Son PL v Pernod Ricard Winemakers PL [2016] FCA 1406
SSS owns registered TM THE SIGNATURE for wines PRW produced and sold wines with these labels: 44

Charlesworth J, finding PRW used BAROSSA SIGNATURE as a TM SIGNATURE is a familiar word in wine parlance, synonym with “quintessential”, “defining”, “typical”; like “signature dish” But could still be perceived by consumer as a wine product name Not a descriptor for wine in the same sense as “red”, “white”, “shiraz” Not commonly used in TMS for wine Fact that BAROSSA and SIGNATURE are descriptive words is relevant to but not determinative of whether they are used as a TM BAROSSA SIGNATURE would be seen as a sign separate from JACOB’S CREEK and RESERVE BAROSSA SIGNATURE conveys an impressionistic not literal meaning “The unusual combination of words creates the impression of a softly spoken slogan.” 45

Charlesworth J finding BAROSSA SIGNATURE not deceptively similar to THE SIGNATURE: Definite article “THE” forms a necessary part of the registration Consumer would not loiter in a wineshop for long pondering the literal meaning of THE SIGNATURE, but nor would s/he give such fleeting or rushed consideration to the TM that the word THE would not register in the consumer’s conscious or unconscious mind “THE” causes “SIGNATURE” to convey its ordinary meaning as a noun not adjective, and assists in creating a subtle impression that the signature referred to is a signature of some particular importance That is the essential and memorable element of the registered TM, based on an imperfect recollection of an ordinary consumer 46

Charlesworth J finding BAROSSA SIGNATURE not deceptively similar to THE SIGNATURE: General impression of BAROSSA SIGNATURE is that the wine is typical of a style of wine which is sourced from and characteristic of the Barossa region The unconventional combination of words creates a further and important difference from THE SIGNATURE “Thus, although I am satisfied that a distinctive part of THE SIGNATURE is used in BARROSSA SIGNATURE, it is not used in such a way and in such a context that its use would be likely to cause confusion” PRW did not subjectively intend to cause confusion or wrongfully exploit the goodwill residing in THE SIGNATURE 47

Charlesworth J, obiter: If the TMs had been deceptively similar, PRW would not be entitled to defence of good faith descriptive use: s 122(1)(b) PRW acted honestly, but did not use BAROSSA SIGNATURE purely for the purposes of description 48

Educational Broadcasters Adelaide Incorporated v Australian Broadcasting Commission [2016] FCA 1502
Applicant owned the mark 5UV RADIO ADELAIDE registered in respect of radio broadcasting services & broadcast under the name RADIO ADELAIDE since 2003 ABC had broadcast under the name 891 ABC ADELAIDE but intended to change to ABC RADIO ADELAIDE EBA alleged TM infringement & breach of ACL - sought interlocutory injunction restraining the ABC from use of the words RADIO ADELAIDE in relation to radio broadcast services 49

Educational Broadcasters Adelaide Incorporated v Australian Broadcasting Commission [2016] FCA 1502
Charlesworth J, granting the injunction: Applied test for interlocutory injunction as set out in ABC v O’Neill Rejected ABC’s contention that the Applicant must demonstrate irreparable harm that can not be compensated by damages Accepted that there is at least a “serious question to be tried” as to whether: 5UV RADIO ADELAIDE is deceptively similar to ABC RADIO ADELAIDE (TM infringement) The use of the new ABC brand indicia was likely to breach ACL Accepted that there is value in the ABC rolling out its rebranding strategy in a nationally consistent manner but… Held that balance of convenience favoured grant of the injunction 50

Veda Advantage Ltd v Malouf Group Enterprises PL [2016] FCA 255
Veda is the leading data analytics business in Australia, which collects, analyses and discloses information for the purpose of providing credit reports about the creditworthiness of individuals and corporations Veda owns TMs VEDA, VEDA ADVANTAGE, VEDACHECK and VEDASCORE Malouf is in the business of assisting consumers with poor credit ratings to rectify errors in credit reports, including those issued by Veda Malouf purchases Google AdWords to advertise its websites (eg) One of the Google AdWords used by Malouf is VEDA, which it uses to target people trying to contact Veda, including those who wish to obtain copies of their credit reports Veda sued Malouf for TM infringement and misleading conduct (ACL) 51

Katzmann J, on use as a TM: Malouf’s use of VEDA keywords is not a TM use Firstly, advertiser merely selects the keywords and provides them to Google Malouf not using the keywords as a sign to distinguish its services from the services of others Rather, it used keywords to identify internet users who may have an interest in using its services Secondly, VEDA keywords may be acquired by anyone under Google’s AdWords program, including Malouf’s competitors, and their use as search terms will produce sponsored links not only to Malouf’s websites by also to its competitors, including Veda’s own website 52

Katzmann J, on use as a TM: Malouf’s use of VEDA keywords is not a TM use Thirdly, keywords are invisible to consumers “the proposition that using words which are invisible and inaudible, indeed imperceptible to consumers is using them as a trade mark makes no sense” A consumer’s search for “veda credit report” may return a link to Malouf’s website, but the consumer will not know if that was due to use of “veda” or “credit report” keywords Followed Kenny J in Complete Technology [2011] FCA 1319 European decisions not applicable 53

Katzmann J, on use as a TM: Malouf did not use VEDA as a TM in sponsored links such as “Veda Credit File Repairs”, “Get Your Veda File”, “Clean Your Veda File”, “Fix My Veda History” Accepted Mr Malouf’s evidence that he was using VEDA descriptively VEDA is used to describe the object to which Malouf’s services are directed – fixing, cleaning or repairing Veda credit files or report – not as a badge of the origin of Malouf’s business and thus not as a TM However, Malouf did use VEDA as a TM in sponsored links “The Veda Report Centre” and “the Veda-Report Centre” Used as badge of origin to indicate connection between Malouf’s business and Veda, to market Malouf’s business under VEDA (Malouf gave undertaking not to use “The Veda Report Centre”) 54

Clipsal Australia PL v Clipso Electrical PL [2017] FCA 60
Clipsal owns TM registrations for CLIPSAL and the following shape mark, for electric switches etc: 55

Clipso registered and used the TM CLIPSO for switches, and sold switches with a similar shape as Clipsal’s shape registration Perram J: Clipso’s director gave false evidence about how he chose CLIPSO name He was perfectly aware of Clipsal’s products and brand at that time He selected CLIPSO because it resembled CLIPSAL, because he wished members of the public, electrical wholesalers and electrical contractors to think that there was some association between CLIPSO products and Clipsal’s products 56

Perram J: CLIPSO is not substantially identical with CLIPSAL But, CLIPSO is deceptively similar to CLIPSAL CLIPSAL is famous within the electrical trade, but on the facts of this case, that fame does not prevent deceptive similarity: cf Mars v Sweet Rewards An electrician gave evidence that he wondered whether CLIPSO was not perhaps a new discount line produced by CLIPSAL Not necessary to resort to the fact that Clipso’s director set out to trade off the reputation of CLIPSAL, but it strongly corroborates the conclusion of deceptive similarity CLIPSO TM registration should be cancelled under s 44 and 60 57

Perram J: CLIPSO TM also cancelled under s 62A - registered in bad faith: subjective element: Clipso’s director’s conduct was dishonest objective element: “It is not commercially appropriate behaviour to sell competing products into the market under a very similar name, with the actual intention of misleading consumers into thinking that they are buying a different product.” CLIPSO TM also cancelled under s 88(2)(c) – at time of application for rectification its use is likely to deceive or cause confusion. Upon cancellation, Clipso will no longer have defence to infringement under s 122(1)(e) Clipso not entitled to defence for good faith use of own name (s 122(1)(a)), because name not chosen in good faith 58

Perram J: Clipso did not use the shape of its switches as a TM Thus no infringement of Clipsal’s shape TM: 59

Insight Radiology v Insight Clinical Imaging [2016] FCA 1406
Since 2008 ICI has been operating INSIGHT CLINICAL IMAGING clinics in WA Since 10 Oct 2012 ICI has been registered owner of TMs: Word mark: InSight Clinical Imaging Composite mark: 7 Dec 2011: IR’s director Mr Pham applied for TM: ICI opposed registration TMO refused registration 60

Since 2008 ICI has been operating INSIGHT CLINICAL IMAGING clinics in WA Since 10 Oct 2012 ICI has been registered owner of TMs: Word mark: InSight Clinical Imaging Composite mark: IR operated clinics in NSW from 2004 under other names, rebranded as INSIGHT RADIOLOGY in 2011 7 Dec 2011: IR’s director Mr Pham applied for TM: ICI successfully opposed registration IR appealed TMO decision to Federal Court ICI sued IR: TM infringement, passing off and ACL IR cross-claimed to revoke ICI’s TMs 61

Davies J rejecting ICI’s opposition under s 58: not substantially identical: 62

Davies J rejecting second limb of ICI’s opposition under s 58, and s 59: TM application filed by Mr Pham, assigned to IR after acceptance and during opposition The TM was designed for and used by the company for its business purposes The application was made in the wrong name, should have been made in the company’s name Mr Pham never intended to use the TM himself, or license its use Rather, his intention always was for the company to use it However, Mr Pham validly assigned TM application to the company The company was thus the appropriate “applicant” during the application, for purposes of ss 27, 58 and 59: Mobileworld; Global v YD 63

Davies J, upholding ss 60 and 42(b) opposition: ICI has a reputation in Australia, not just WA marketing extended beyond WA through ICI’s website and promotions at national conferences sufficient reputation despite having only 10 referrals from other states and 237 interstate patients Use of IR’s composite mark would be likely to cause deception Thus s 60 ground made out Use would also be misleading or deceptive in breach of ss 18 and 29 ACL, thus contrary to law under s 42(b) TMA 64

Davies J, rejecting IR’s cross-claim to revoke ICI’s TMs: s 41: INSIGHT is inherently capable of distinguishing ICI’s radiology services; ordinary signification is not directly descriptive grounds for cancellation under ss 42(b), 44, 60 and 88 also rejected 65

Davies J, finding TM infringement against IR: Deceptive similarity conceded No defence for good faith use of IR’s own name (s 122(1)(a)(i)) Choice of IR’s name was not in good faith No defence of exercise of a right to use a TM given to IR under the TMA (s 122(1)(e)) IR had never achieved registration No defence that IR would achieve registration (s 122(1)(fa)) determined as a hypothetical application filed now s 44 would prevent registration; no honest concurrent use: s 44(3) Passing off and ss 18 and 29 ACL claims also upheld 66

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1241
Titan sued Cross for TM and copyright infringement and breach of ss 18 & 29 ACL Titan issued a subpoena to Cross’s TM attorneys for production of various documents including records of all instructions received from Cross relating to a domain name dispute The TM attorneys produced documents in redacted form Titan sought inspection of unredacted documents The TM attorneys asserted privilege against production: s 229 TMA Cross was invited to provide evidence in support of privilege claim, but did not 67

Logan J, rejecting the claim for privilege: The person asserting privilege must prove it applies in the particular circumstances, and that proof is not found in a “mere sworn assertion”. The essential issue on a claim for privilege is the purpose for which the document or communication in question was made. The best, though not the only sufficient, source of evidence is the direct evidence of the person whose purpose is in question. Court must be cautious about inspecting the documents in question, to ensure procedural fairness to other affected parties. 68

Logan J, rejecting the claim for privilege: Client legal privilege protects communications made in connection with: giving or obtaining legal advice; providing legal services, including representation in Court. S 229 privilege is not completely the same as client legal privilege: limited to first limb, providing advice, and limited again to IP advice; does not extend to other documents generated by a TM attorney in the course of representing a client in Court or arbitral proceedings. Explanatory Memo to Raising the Bar Act: “Attorneys do not have the same rights as lawyers do to initiate and represent parties in court.” Advice from a TM attorney about the contents of a statutory declaration or a submission may be privileged, but the mere drafting of those documents by a TM attorney would not attract s 229 privilege. 69

Primary Health Care Ltd v Commonwealth of Australia (2016) 117 IPR 73
Applicant applied to register PRIMARY HEALTH CARE in class 35 for “medical centre business management services” etc TMO upheld opposition by Commonwealth and all States and Territories Applicant appealed to Federal Court 70

Jagot J, upholding opposition under s 41: it is artificial to draw a distinction between provision of “medical centre business management services” and provision of “medical care” PRIMARY HEALTH CARE is directly descriptive of medical centre business management services Other persons might legitimately wish to use that phrase in connection with those services Applicant has not established basis for registration under ss 41(5) or (6) Difficulty in proving acquired distinctiveness comes back to the artificial distinction between provision of medical centre business management services and provision of medical care those business administration services have no existence other than in the context of providing medical care 71

Jagot J, upholding opposition under s 43: PRIMARY HEALTH CARE has a clear connotation of first level or first contact health care, rather than connoting the Applicant as the source of medical centre business administration services Applicant does not provide clinical care – that is provided by contracted GPs - and clinical care is a key component of primary health care Far-fetched to expect that anyone other than a person familiar with the details of the Applicant’s business model would understand that PRIMARY HEALTH CARE identifies: the source of the Applicant’s medical centre business administration services but not the clinical care provided from the medical centre 72

Jagot J, upholding opposition under s 42(b): Use of the mark PRIMARY HEALTH incorrectly represents that the applicant: provides primary health care services; and is responsible for the health and medical services provided by practitioners within its medical centres. The Applicant is not the provider of clinical care – rather, that is provided by contracted GPs - and clinical care is a key component of primary health care Use of the mark amounts to conduct in trade or commerce that is or likely to be misleading or deceptive contrary to s 18 of the ACL. 73

Harcourts WA PL v Roy Weston Nominees PL (2016) 116 IPR 269
ROY WESTON is a well-known real estate brand in WA, since 1950s Harcourts claims entitlement to ROY WESTON by 2004 purchase of the shares in Roy Weston Pty Ltd, which had traded under ROY WESTON and franchised that name to other estate agents, including RWN Harcourts owns registration for ROY WESTON dating back to 2002 Harcourts rebranded its franchise network from ROY WESTON to HARCOURTS WA 2009: RWN obtained registration ROY WESTON REAL ESTATE on the basis of a statutory declaration asserting that the CEO of Roy Weston Pty Ltd had given a verbal assurance that RWN could use that name 74

July 2011: RWN applied to Registrar for removal of Harcourts’ registration of ROY WESTON for non-use June 2008 to June 2011 March 2013: registrar referred non-use proceeding to Federal Court September 2012: Harcourts issued separate Federal Court proceeding against RWN for TM infringement Also claims for passing off, misleading conduct and breach of franchise agreement 75

McKerracher J, rejecting RWN’s application for removal for non-use: RWN contended that Harcourts’ 2007 rebranding amounted to a complete switch from ROY WESTON to HARCOURTS WA, with no ongoing use of ROY WESTON However, Harcourts used ROY WESTON as a TM in: a banner advert at the domain name stating “Roy Weston is now proudly part of the Harcourts Real Estate Group the domain name which redirected users to a White Pages entry which redirected readers to Harcourts WA But Harcourts did not use ROY WESTON as a TM by awarding a “Roy Weston Medal” at the Harcourts WA Gala Dinner and Awards Night, or by maintaining a “Roy Weston Wall of Fame” in its head office 76

McKerracher J, rejecting RWN’s cross-claim to revoke Harcourts’ registration of ROY WESTON under ss 42(b): It is the conduct of RWN, not Harcourts, which is likely to mislead McKerracher J, upholding Harcourt’s claim to revoke RWN’s registration of ROY WESTON REAL ESTATE: s 42(b): RWN’s registration was contrary to law by reason of breach of the its 2002 franchise agreement with Harcourts’ predecessor s 58: RWN was not the true owner of the TM; Harcourts was s 62(b): RWN obtained registration based on declarations which contained representations which were false in material particulars however, bad faith not made out: s 62A 77

McKerracher J, finding infringement by RWN of Harcourts’ TM and rejecting RWN’s defences: RWN not entitled to defence of use of own name in good faith (s 122(1)(a)(i)) arising from its corporate name “Roy Weston Nominees Pty Ltd” Defence would only apply in respect of use of its own company name Abbreviation would permit good faith use of “Roy Weston Nominees”, but it is doubtful whether that would apply to “Roy Weston” or “Roy Weston Real Estate” A misapprehension of rights based on a selective viewing of the legal position may deprive a registrant of the good faith defence No defence for prior use under s 124 78

Harcourts WA PL v Roy Weston Nominees PL (No 5) [2016] FCA 983
Further decision on orders to be made to reflect judgment Key issue: should Harcourts’ delay in bringing infringement proceeding against RWN deprive Harcourt of injunctive relief against RWN? McKerracher J: “The short position is that, with the passing of the years, RWN has conducted a successful business generating, I infer profits. In my view, the appropriate recognition of Harcourts WA’s delay is not in declining to grant an injunction that reflects the outcome of the litigation, but, rather, to reflect that delay in a reduction of the period of time in respect of which an account of profits would apply. The period of time would be broadly commensurate with the delay in commencing proceedings.” 79

Harcourts WA PL v Roy Weston Nominees PL (No 5) [2016] FCA 983
Further decision on orders to be made to reflect judgment Key issue: should Harcourts’ 6 year delay in bringing infringement proceeding against RWN deprive Harcourt of injunctive relief against RWN? McKerracher J: No delay in putting RWN on notice of Harcourts’ position – 5 letters of demand were sent in Over the years RWN has conducted a business generating profits The appropriate recognition of Harcourts’ delay is not in declining an injunction but rather in a reduction of the period of time in respect of which an account of profits would apply Order: account of profits limited to period after issue of proceeding 80

Trade Marks Office decisions
ATMO Decisions Trade Marks Office decisions 81

Insufficiently distinctive – s 41
SUPER SLICES Cheese and cheese products. Bega Cheese Limited [2016] ATMO 13 82

FAIRFIELD Advertising services, franchise services, hotel services, restaurant services etc. Marriott Worldwide Corporation [2016] ATMO 1. SANREMO Remote controls for mining equipment etc Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2016] ATMO 7. 83

MCQUEEN Several classes incl perfumes, eyewear, watches, clothing, footwear etc Metropolitan Investment Group Pty Ltd v Autumnpaper Ltd [2016] ATMO 115 ODDS BOOST Wagering services Ladbrokes Digital Australia Pty Ltd [2016] ATMO 116 84

SYDNEY BUSINESS SCHOOL Various goods & services related to educational & advisory services The University of Sydney v The University of Wollongong [2016] ATMO 17 (pre-RTB s 41(6) TMA applied – evidence of use insufficient to support reg’n). LOCALFITNESS Various goods & services related to fitness services, advertising, promotion etc Localfitness IP Pty Ltd [2016] ATMO 23. 85

CRADLE MOUNTAIN BEEF CRADLE MOUNTAIN LAMB Fresh meat. Bellevue Consultancy Services Pty Ltd [2016] ATMO 33. 86

BHUJA Various foodstuffs in classes 29 & 30. Majans Pty Ltd [2016] ATMO 47. HOME SHOW Organising, arranging, conducting & managing exhibitions, trade shows and trade fairs etc. Exhibitions and Events Australia Pty Ltd [2016] ATMO 71 87

MELBOURNE CITY FOOTBALL CLUB Several classes including entertainment, sporting and cultural activities. MHFC Holdings Pty Ltd [2016] ATMO 96. 88

Many classes – largely relating to food, medicines and animal products Ferngrove Pharmaceuticals Australia Pty Ltd [2016] ATMO 74. 89

Shape mark – mark consists of 3D design Registration sought in relation to bore hole plugs for use in earth drilling etc Van Ruth Pty Ltd [2016] ATMO 60 90

Energy drinks The Coca-Cola Company v Frucor Beverages Limited [2016] ATMO 38 91

Sufficiently distinctive – s 41
BROCKBEAUTY Non-medicated skin preparations, creams, lotions etc Brock Beauty Inc [2016] ATMO 44 MY POST Computer software & hardware, retail services, electronic banking and many other classes. Jason Bosco Elvis Soares v Australian Postal Corporation [2016] ATMO 10. 92

REALESTATE.COM.AU Advertising of real estate services, Real estate property services First National Group of Independent Real Estate Agents Limited v REA Group Ltd [2016] ATMO 102 Section 41(6) applied as per Bromberg J’s analysis in REA Group Ltd v Real Estate 1 Ltd 93

W WATCH Various goods including phones, medical apparatus, watches, tablet computers Swatch AG v LG Electronics Inc [2016] ATMO 121. FOX Medical and vet products, pharmaceutical preparations etc Vectura GmbH [2016] ATMO 77 94

BLACK DOG Charitable services, charitable fundraising, education and training services in relation to mental health, provision of mental health services incl counselling and psychological care. Black Dog Institute v Black Dog Ride Pty Ltd [2016] ATMO 66 H.O. Irgang (relying on Cantarella): “…the term is common within the mental health industry, [but] I am not satisfied that other traders are likely to require to use the expression BLACK DOG ... They may ‘want’ to use it but they do not require use of the expression." 95

Television receivers, monitors, LCD panels etc My Brilliance Pty Ltd v Samsung Electronics Co Ltd {2016] ATMO 84 96

Contrary to law: s 42(b) – contrary to Copyright Act 1968
v Applicant sought to register mark (left) incorporating a substantial part of the Opponent’s copyright works (right) Havmor Ice Cream Ltd v Honest the Snack Shack Pty Ltd [2016] ATMO 64 97

DERMERA v DERMIRA NABI v NAB NABI CLOUD NAB GROUP
Deceptively similar TMs DERMERA v DERMIRA Body & beauty care, cosmetics v pharmaceutical preparations incl rel to skin care Brock Beauty Inc. [2016] ATMO 57 NABI v NAB NABI CLOUD NAB GROUP Handheld digital devices etc v computer programs used in banking services (inter alia) National Australia Bank Limited v Mattel, Inc [2016] ATMO 59 98

REVOLVO V VOLVO Deceptively similar TMs
Bearings for various uses incl vehicles v car engines and motor parts Volvo Trademark Holding AB v Timken UK Limited [2016] ATMO 91 99

MR. PINK v Deceptively similar TMs
Energy drinks v sports drinks & energy drinks Pink energy Beverages Pty Ltd v Mr. Pink Collections, LLC. [2016] ATMO 20 100

v Deceptively similar TMs
Restaurant services etc v providing food and drink, takeaway food etc Note that Applicant’s mark held NOT deceptively similar to opponent’s other registered mark for the plain words BING BOY in the same classes. Bing Boy IP Pty Ltd v Bing Go Street Food [2016] ATMO 55 101

Deceptively similar TMs
Componentry for electrical devices v computers, computer programs etc Karen Lee [2016] ATMO 19 102

Clothing – trousers, jeans etc v Various classes incl clothing Levi Strauss & Co v Yugen Kaisha Shimura (Shimura, Ltd.) [2016] ATMO 67 103

Electric food processors v Electric food blenders BlendTec Inc. v Healthy Foods LLC [2016] ATMO 69 But s 44(4) TMA (prior use) applied & mark proceeded to registration. 104

V SAMURAI Fishing tackle Fishing reels and fishing lines Teraglow Pty Ltd [2016] ATMO 32 105

UNIVERSAL GYM V Deceptively similar TMs
Clothing for gymnastics, gymwear etc v pyjamas, t-shirts, other clothes etc Universal Protein Supplements Corporation v Universal Gym Australia Pty Ltd [2016] ATMO 24 106

V NUTRA-LIFE Dietary supplements etc v vitamin and mineral supplements etc Health Foods International Limited v Healthyby Pty Ltd [2016] ATMO 97 107

DESIGN HUNTER V Deceptively similar TMs
Arranging & conducting seminars v retailing services, interior design services The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2016] ATMO 111 108

MELBOURNE CITY FOOTBALL CLUB V Deceptively similar TMs
Entertainment, sporting and cultural activities MHFC Holdings Pty Ltd [2016] ATMO 96. 109

V Deceptively similar TMs And 2 other similar marks
Skin preparations v Various classes including skin preparations Retail Royalty Company v Aloe Vera of America, Inc [2017] ATMO 7 110

ATOMA SUSHI TRAIN V SUSHI TRAIN
Deceptively similar TMs ATOMA SUSHI TRAIN V SUSHI TRAIN Sushi, snack foods, retail services v Restaurant services etc Sushi Train (Australia) Pty Ltd v RGR Norman Pty Ltd as trustee for the Norman Family Trust [2016] ATMO 76 111

SCREENTECH v Deceptively similar TMs
Electronic displays and signs v Projection screens, flat panel displays etc Screen Technics Pty Limited v S-TECH Holdings Pty Ltd [2017] ATMO 1 (Mark proceeded to registration on application of ss 44(3) and 44(4) TMA – ss 42(b), 58, 58A and 60 grounds also unsuccessful). 112

MICROGUARD v MICROSHIELD
Not deceptively similar TMs - words MICROGUARD v MICROSHIELD Skin care products v Antiseptic skin cleansers etc Schulke & Mayr GmbH v Ecolab USA [2016] ATMO 8 (s 60 ground also unsuccessful) 113 113

OPTUM v OPTUS Not deceptively similar TMs - words
Multiple service classes v Multiple classes rel to telecommunications relating to health Singtel Optus Pty Ltd v Optum, Inc [2016] ATMO 11. (ss 42(b), 58 and 60 grounds also unsuccessful) 114 114

The 2nd Hand Crown v CROWN (& 66 other marks including the word CROWN)
NOT Deceptively similar TMs The 2nd Hand Crown v CROWN (& 66 other marks including the word CROWN) Pawn brokerage v Registrations in many different classes Crown Melbourne Limited v Steven Tintor [2016] ATMO 75 (ss 42(b), 59 and 60 grounds also unsuccessful). 115

PLATINUM LOGISTICS V NOT Deceptively similar TMs
Customs brokerage, courier & transport services v Postal services etc Platinum Logistics Pty Ltd v Platinum Freight Management Pty Ltd [2016] ATMO 18 (ss 58 and 60 grounds also unsuccessful). 116

W WATCH v NOT Deceptively similar TMs Phones, watches, jewellery, etc
Swatch AG v LG Electronics Inc [2016] ATMO 121 117

v NEXT Not deceptively similar TMs
Retailing services rel to newsagencies v Retail services Next Group Plc v Nexcorp Australia Proprietary Limited [2016] ATMO 34 (ss 58, 59, 60 and 62A grounds also unsuccessful). 118 118

v MY BRILLANCE Not deceptively similar TMs
and other marks incorporating “Brilliance” alone & w other words Television monitors etc v Various classes My Brilliance Pty Ltd v Samsung Electronics Co Ltd [2016] ATMO 84 (ss 41, 42(b), 43, 58 and 60 grounds also unsuccessful). 119 119

v CHIAHH Not deceptively similar TMs
Snack bars, fruit drinks etc v Non-alcoholic beverages etc Bickfords Trading Pty Ltd v Chia Limited [2016] ATMO 90 (ss 42(b), 43, 60 grounds also unsuccessful). 120 120

AG ADRIANO GOLDSCHMIED v Not deceptively similar TMs - words
Clothing, footwear, headgear v Clothing, footwear, headgear Grew Holdings Pty Ltd v Adriano Goldschmied LLC [2016] ATMO 65 (ss 42, 58A & 60 grounds also unsuccessful) 121 121

CHARTERED GLOBAL MANAGEMENT ACCOUNTANT
Not deceptively similar TMs CHARTERED GLOBAL MANAGEMENT ACCOUNTANT V Association services in relation to accounting and financial services The Institute of Chartered Accountants in Australia v Association of International Certified Professional Accountants [2016] ATMO 94 Oppositions under ss 42(b), 43, 60 and 62A also unsuccessful. 122 122

v UNLEASH THE BEAST! Not deceptively similar TMs
Energy drinks v Non-alcoholic beverages Monster Energy Company v Ox Group Global Pty Ltd [2016] ATMO 105 123 123

v SIMPLY SMARTER INSURANCE
Not deceptively similar TMs v SIMPLY SMARTER INSURANCE Various services incl insurance v Insurance services etc A & G Insurance Services Pty Ltd v Stratton Finance Pty Ltd [2016] ATMO 106 124 124

v Not deceptively similar TMs
Vehicle tyres etc Tyres & tubes for various vehicles PT Industri Karet Deli v Qingdao Sentury Tire Co Ltd [2016] ATMO 27 Grounds based on sections 42, 60 and 62A also unsuccessful. 125 125

v & other similar marks Not deceptively similar TMs
Cheese (Manchego) Dairy products including cheese Bega Cheese Limited v Quesos Vega Soltuelamos SL [2016] ATMO 81 Section 60 opposition also unsuccessful. 126 126

Mini Models v MINI Confusion likely: s 60
Various classes incl computer games v automotive industry & rel merchandise Bayerische Motoren Werke AG v Home Focus Development Limited [2016] ATMO 110 127 127

Confusion likely: s 60 v Financial advice & related services v tax refund services Tax Tips Pty Ltd v Xact Taxation Pty Ltd [2016] ATMO 25. 128 128

v SKYY BLUE Confusion likely: s 60
Alcoholic beers v brewed, malt-based alcoholic beverage Skyy Spirits, LLC v Blue Sky Brewery Holdings Pty Ltd [2016] ATMO 21 129 129

BEATS BEATS BY DR DRE CLUB BEATS POWER BEATS etc V BEATBOX
Confusion likely: s 60 V BEATBOX BEATS BEATS BY DR DRE CLUB BEATS POWER BEATS etc Earphones, headphones etc v Earphones, headphones etc Beats Electronics, LLC v LG Electronics Inc. [2016] ATMO 104 130 130

McKosher v McFeast McChicken McBreakfast McPavlova McGrilled McCafe
Confusion likely: s 60 McKosher v McFeast McChicken McBreakfast McPavlova McGrilled McCafe etc Multiple goods & services rel to food v Multiple classes rel to food McDonald’s Corporation v Glaser [2016] ATMO 22. 131 131

OF SEELEY v CLIMATE MASTER INTERNATIONAL
Confusion likely: s 60 CLIMATE MASTERS OF SEELEY v CLIMATE MASTER INTERNATIONAL Advertising, education services etc v Air conditioning systems, installation, repair Climate Master (Australia) Pty Ltd v Seeley International Pty Ltd and FF Seeley Nominees Pty Ltd [2016] ATMO 68 132 132

THE DRIFTERS v Confusion likely: s 60
Various services relating to music and live entertainment Treadwell Original Drifters LLC v WL Trout Promotions Pty Ltd [2016] ATMO 80 133 133

Funeral services, related services
Confusion likely – s 60 FUNERAL SERVICES FUNERAL ALLIANCE v ALLIANCE CENTRAL VICTORIA SOLUTIONS Funeral services, related services Catholic Metropolitan Cemeteries Trust v Bendigo Cemeteries Trust [2016] ATMO 30 134

STORAGE WARS v STORAGE WARS
Confusion likely – s 60 STORAGE WARS v STORAGE WARS Auctioneering services v US TV series based on auctions of contents of storage lockers A&E Television Networks LLC v Storage Wars Pty Ltd [2016] ATMO 12 135

ATOMIC BEATS v BEATBOX BEATS BEATS BY DR DRE CLUB BEATS
Confusion likely – s 60 ATOMIC BEATS v BEATBOX BEATS BEATS BY DR DRE CLUB BEATS POWER BEATS etc Audio speakers etc v Ear phones, headphones etc Beats Electronics LLC v Strategies Unleashed Pty Limited [2017] ATMO 6 136

v Confusion likely – s 60 Book clubs, retailing, wholesaling etc
Charity services v Fund raising; book sales Ananda Marga Pracaraka Samgha Ltd v Seva Dharma Mission (Australia) Limited [2016] ATMO 79 137

v Confusion NOT likely: s 60 Display apparatus etc v LED screens etc
Big Screen Video Pty Ltd v Pyramid Circle Holdings Pty Ltd [2016] ATMO 16 138 138

v Confusion NOT likely: s 60
Charitable fundraising etc v Charitable services etc Black Dog Institute v Black Dog Ride Pty Ltd [2016] ATMO 66 139 139

MONSTERS MONSTER UNIVERSITY v MONSTER ENERGY
Confusion NOT likely: s 60 MONSTERS MONSTER UNIVERSITY v MONSTER ENERGY Multiple classes v primarily energy drinks, clothing, headgear etc Monster Energy Company v Disney Enterprises, Inc [2017] ATMO 2 140 140

BEAST MODE v UNLEASH THE BEAST!
Confusion NOT likely: s 60 BEAST MODE v UNLEASH THE BEAST! REHAB THE BEAST! UNLEASH THE NITRO BEAST! UNLEASH THE ULTRA BEAST! PUMP UP THE BEAST! Apparel v primarily energy drinks, clothing, headgear etc Monster Energy Company v Nathan Darma [2017] ATMO 4 141 141

MATUSALEM THE SPIRIT OF CUBA LIBRE MATUSALEM EL ESPIRITU DE CUBA
False geographical indication: s 61 MATUSALEM THE SPIRIT OF CUBA LIBRE MATUSALEM EL ESPIRITU DE CUBA MATUSALEM EL ESPIRITU DE CUBA LIBRE Alcoholic beverages (excluding beer) Havana Club Holding SA and Corporacion Cuba Ron S.A. v 1872 Holdings, V.O.F. [2016] ATMO 37 Applicant’s rum has not been produced in Cuba for at least 50 years. 142 142

Bad faith: s 62A MY POST Applicant (Australia Post) sought registration of this mark in circumstances where it knew of the Opponent’s use of the mark as a brand name and had unsuccessfully negotiated the purchase a domain name consisting of that mark from the Opponent. Hearing Officer Irgang considered this amounted to bad faith. Jason Bosco Elvis Soares v Australian Postal Corporation [2016] ATMO 10. 143 143

Bad faith: s 62A Applicant sought to register mark (on left above) in respect of alcoholic beverages including beer… There was evidence that officers of the Applicant had seen the Opponent’s mark (on the right). Application was made on the day after the Opponent’s launch. Broo Ltd v Independent Brewery Pty Ltd [2016] ATMO 61 144 144

Bad faith: s 62A CALICO Applicant sought to register mark in circumstances where it had knowledge of the Opponent’s use of the same mark in the United States, an intention to use the mark in Australia and had had actual dealings with the Opponent. Calico LLC v Calico Global Pty Ltd [2016] ATMO 98. 145 145

That’s all folks 146 146

Trade Marks Update IPSANZ Seminar

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