SCHULKE & MAYR GMBH V ECOLAB USA INC [2016] ATMO 8

Schulke & Mayr opposed the registration of the trade mark MICROGUARD filed by Ecolab USA on the basis of its prior use (section 60) and registration (section 44) of the trade mark MICROSHIELD.

The applicant’s goods were hand soaps and washes, and antibacterial hand soaps and washes.

On section 44, the Hearing Officer noted that there was a difference in meaning to the ‘MICRO’ elements of the respective marks, with the opponent’s MICRO referring to small in size, but the applicant’s MICRO referring to microbes or bacteria. This, in the Hearing Officer’s view, rendered the overall trade marks distinguishable on a visual and aural basis, as the ‘MICRO’ elements were, in effect, descriptive.

On section 60, the opponent led evidence of significant sales, but it was not clear to the Hearing Officer if he could attribute the reputation from those sales to the opponent’s MICROSHIELD trade mark, the house brand of the prior owner of the opponent’s trade mark, or the trade mark MICROSHIELD ANGEL.

Further, the nature of the goods meant that each would usually be dealt with by medical professionals and, as such, the likelihood of confusion between the marks was lower than for most types of goods.

Accordingly, the Hearing Officer was not satisfied that deception or confusion was likely to arise as a result of the opponent’s prior mark.

The opposition failed on both grounds.

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.

Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Sydney, Australia

khajaque.kortian@spruson.com

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Associate / Trade Mark Attorney
Trade Marks Team
Sydney, Australia

daniel.wilson@spruson.com

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