On 29 June 2015, Dingo Software Pty Ltd (the Applicant) filed a trade mark application for a stylised version of the word DINGO featuring a Dingo head device (see image below). The application was filed in classes 35, 37, and 42 and covered inter alia repair and maintenance consultancy and advisory services in class 37.
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The trade mark application was originally accepted and advertised, but subsequently acceptance was withdrawn because of an application for the word mark DINGO (TM 1719019) which, although only filed in Australia on 14 November 2014, claimed convention priority from an application filed in Germany on 5 May 2014. The earlier DINGO mark has overlapping services in class 37.
Here are details of the convention mark, taken from the decision:
IRDA No.: 1263063
Holder: Krauss-Maffei Wegmann GmbH & Co. KG
Specification of goods:
Class 13: Ammunition; anti-aircraft weapons; artillery guns; ballistic weapons; breeches of firearms; cannons; cartridges; detonators; firearm sights; firearms; firing platforms; gun carriages; guns; howitzers; loading devices for projectiles and propellants for heavy weapons; machine guns; mines; mortars (firearms); motorized weapons; projectiles; rifles; rocket launchers; rockets; shells (projectiles); sights, other than, telescopic sights, for firearms; sights, other than telescopic sights, for guns; tanks; track tanks; trunnions for heavy weapons; weapons; weapon systems; weapon systems for combat vehicles; mechanical and remote controlled weapon stations; parts, fittings and accessories of aforesaid goods
Class 37: Interference suppression in electrical apparatus; vehicle maintenance; installation, maintenance and repair of vehicle and weapon simulators; installation, maintenance, servicing, retrofitting and repair of vehicles and vehicle components; installation, maintenance, servicing, retrofitting and repair of weapons and weapon components; installation, maintenance, servicing, retrofitting and repair of weapon systems and weapon systems components; installation, maintenance, servicing, retrofitting and repair of technical apparatus and equipment; retreading of tires [tyres]
The Applicant requested a hearing on the proposed revocation of acceptance of its mark.
As with all convention claims, this set of circumstances was unfortunate. Marks filed overseas and then filed in Australia relying upon the benefit of the priority date from the overseas jurisdiction, are very difficult to predict and cause understandable headaches for applicants.
In this instance, too, the convention mark is clearly related to the defence sector, whereas the applicant appears to want to use its mark in respect of IT services. The trade channels are likely to be very different. As seen in Raytheon Company  ATMO 111, the relevant market for weapons such as those listed in class 13 in the convention application is exclusively the Australian Defence Force.
The Applicant argued against revocation of acceptance based on its existing registered rights for a plain DINGO word mark which date back to 2008 in relation to the same services in class 37.
The hearing officer concluded that in view of the Applicant’s existing statutory rights in the DINGO word mark, it was not reasonable to revoke acceptance of the Applicant’s mark. The hearing officer noted:
- the class 37 goods “are all in relation to specific things”. The Application contained unlimited claims of ‘repair and maintenance consultancy services’ and ‘repair and maintenance advisory services’, but the hearing officer was of the view that they are not similar services to those class: 37 services claimed in the convention application – a practical and fair assessment.
- the Applicant’s rights to the plain DINGO trade mark “as applied to the conflicting services, are undeniably broader in its earlier trade mark than in its current application for a trade mark (in terms of the fact that trade mark 1221946 is registered for the plain word trade mark Dingo)”.
- the convention application was not accepted and “has the Applicant’s prior registration raised as a barrier to its acceptance”. We are surprised by this as this, of itself, is in our view not a proper basis to prevent revocation of the accepted mark, but perhaps the hearing officer here was adding colour and movement.
We note that the opposition period to oppose the mark has now expired, indicating that Krauss-Maffei Wegmann GmbH & Co. KG did not want to initiate an opposition as a vehicle for determining the issue.