It has been a busy and fun year for the team at FAL Marks & Brands. Here is our take on the Top 10 developments in 2015 and to a prosperous and successful 2016.

Shape Mark

  1. Apple is unable to secure trade mark protection for his iPhone 4 in Australia - Apple, Inc [2015] ATMO 74 (17 August 2015)

On 14 June 2011, Apple applied for an extension of protection of an international trade mark registration to Australia. The trade mark consisted of the shape of the iPhone 4. The Australian trade marks office rejected the extension of protection to Australia based on the fact that the elements of Apple’s trade mark application were not distinctive.

The hearing officer stated that “a shape which is dictated by the nature of the goods or by the need to achieve some particular technical or functional outcome cannot operate as a trade mark” and further added that “in order to function as a trade mark, the shape must be something which is extra or which is added to the inherent form of the particular goods as something distinct which can denote origin”.

“Massive” Reputation

  1. Kimberley-Clark Worlwide Inc. v The Reject Shop Limited [2015] ATMO 2 (8 January 2015)

Kimberley-Clark successfully opposed a trade mark application for “KLEENZ logo” in class 3 relying on the reputation of its trade mark “KLEENEX” (s60 of the Trade Marks Act 1995 (Cth)).

Evidence submitted by Kimberly-Clark showed that the “KLEENEX” trade mark had a “massive” reputation in Australia and that the reputation already existed before the priority date. It was also proven than Kimberly-Clark had extensively used its trade mark and that the word “KLEENEX” had acquired a reputation in respect of the contested goods.  

The hearing officer considered that both trade marks were deceptively similar and confusion was inevitable.

Origin & Destination of Trade Marks in Australia

  1. Origin & Destination of trade marks in Australia - Australian Intellectual Property Report 2015

According to this the Australian Intellectual Property Report published in April, 65% of the trade marks filed in Australia during 2014 originated locally and 35% originated overseas. The most active foreign filers are the United States, the United Kingdom and Germany. Those three countries are responsible for 49% of the non-resident applications in Australia.

On the other hand, Australia’s most sought after countries for trade mark filings in 2013 were the United States, China and New Zealand.

If you would like more information on Australian intellectual property statistics, please visit: http://www.ipaustralia.gov.au/about-us/what-we-do/reports/ip_report_2015/.

Substantially Identical

  1. Tosca TravelGoods (Aust) Pty Ltd v Samsonite IP Holdings S.a.r.l [2015] ATMO 39 (8 May 2015)

Tosca was successful in opposing the registration of Samsonite’s “COSMOLITE” trade mark application filed for luggage in class 18. Tosca already owned prior trade mark registration for “COSMO”” in class 18, which had been used since 2001.

The hearing officer concluded that both trade marks “COSMO” and “COSMOLITE” were substantially identical. Further, the opponent also had a superior claim to ownership under s58 Trade Marks Act 1995 (Cth) and as such the applicant was not able to register its “COSMOLITE” trade mark under honest concurrent use provisions.

Plain Tobacco Packaging

  1. Plain Tobacco Packaging Updates – Where next?

Plain Tobacco Packaging refers to the generic look and lack of branding in tobacco packages. Australia is currently the only country in the world to prohibit any kind of branding in the packaging of tobacco products due to legislation introduced in 2012.

Both the United Kingdom and Ireland have passed legislation regulating plain packaging. Cigarette packets manufactured for these countries will have to be plain from May 2016 and it will become illegal in those countries to sell non plain packages from May 2017.

Strong Reputation – Counter-Intuitive

  1. Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd [2015] FCA (1 October 2015) 

Delfi successfully appealed the Registrar’s decision in which Mars succeeded in opposing the registration of its “MALTITOS” trade mark by relying on the reputation of its “MALTESERS” trade mark.

Jessup J considered that there was no similarity between both trade marks and that the ordinary consumer of confectionery would not be likely to be deceived or confused.

Further, regarding the successful opposition ground in which Mars had previously relied on, Jessup J concluded with the following:

I do not consider, however, that that circumstance would make it any more likely that the notional consumer of confectionery would have cause to wonder whether products displayed and sold under the applicant’s mark were from a common source with those displayed and sold under the respondent’s mark. Indeed, with a stronger awareness of the respondent’s mark, I consider that such a consumer would be immediately struck by the differences between the two marks, as discussed above. He or she may observe the limited similarities between the marks and, because the subject of the presumptive interest would be confectionery, may assume that the products were of the same nature as those sold under the respondent’s mark, but, giving the matter a moment’s reflection, would readily conclude that those products were not Maltesers. As I say, the strong reputation of the respondent’s mark would, if anything, make that conclusion a more likely one.

Importation - Consent

  1. Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2015] FCA 1086

Scandinavian Tobacco Group (STG) claimed that Trojan had infringed their registered Australian trade marks “CAFÉ CRÈME”, “HENRI WINTERMANS” and “LA PAZ” under the Trade Marks Act 1995 (Cth) in respect of cigars and that they had therefore engaged in misleading or deceptive conduct in breach of the Australian Consumer Law (ACL) and the tort of passing off.

The alleged infringement concerned the importation by the respondent of cigars manufactured by, or with the consent of, STG Eersel in Belgium and Holland, which were imported and beared the trade marks placed by STG Eersel.

Allsop CJ found that there was no infringement and that he respondent could rely on consent under s123 of the Trade Marks Act 1995 (Cth):

a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

Descriptive Term

  1. Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2015] ATMO 97 (9 October 2015) 

Aldi has successfully opposed the registration of the “MOROCCANOIL” trade mark for hair care products in class 3 by claiming that “Moroccan oil” is a generic term that describes an ingredient used in hair care.

Although the Applicant had initially obtained acceptance of its “MOROCCANOIL” trade mark application by providing evidence of use, the hearing officer stated that the trade mark had no inherent adaptation to distinguish hair products emanating from the applicant.

Europe

  1. New European Trade Mark Law

The first half of the following year will bring some changes to the practice of European Trade Mark Law, among others:

  • The time between publication and the start of the opposition period will be shortened from 6 months to 1 month.
  • A trade mark will have to be used in commerce before the owner can enforce its rights against third parties.
  • A trade mark owner will be able to prevent the transit of goods bearing an unauthorised mark that is identical or indistinguishable from the owner’s mark through the European Union.

Madrid Protocol

  1. Madrid Protocol – Who has joined?

The number of countries who are Members of the Madrid Protocol has continued to increase. In 2015 Algeria, Cambodia and the Gambia have joined the Protocol as well as the African Intellectual Property Organization (OAPI), which comprises a number of mostly French speaking countries in Western and Central Africa and the island nation of Comoros.