The irony relating to these disputes is that the stem of the word “universal” is “uni”: that there is but one. Here, there are three.

On 18 September 2013, Universal Gym Australia Pty Ltd (Applicant) filed Australian trade mark application 1578981 for UNIVERSAL GYM (Mark) in class 25 for “Clothing for gymnastics; Gym shorts; Gym suits; Gymnastic shoes; Gymnastic suits; Gymwear”.

The application was advertised as accepted for registration on 13 February 2014. Universal Protein Supplements Corporation (Opponent) subsequently filed a Notice of Intention to Oppose in relation to the application.

Hearing Officer Bianca Irgang’s decision with respect to the opposition was handed down in Universal Protein Supplements Corporation v Universal Gym Australia [2016] ATMO 24 (26 April 2016).

A second decision involving one of these parties was handed down by Hearing Officer Michael Kirov on 15 July 2014: Universal Health International Pty Ltd v Universal Protein Supplements Corporation [2014] ATMO 64, relating to a stylised trade mark for the word “UNIVERSAL” for, amongst other things, sports and body building supplements.

The first decision:
Section 44 Ground of Opposition

In support of its opposition to the Mark, the Opponent specified a trade mark owned by a third party, (the ‘UNIVERSAL registration’), in arguing that it was deceptively similar to the proposed Mark.

It was not in contention that the marks were not substantially identical; the discussion was therefore concentrated on the issue of deceptive similarity under subsection 44(1)(a) of the TMA.

The hearing officer noted that the Applicant was confused as to what exactly it had applied for. Some of the evidence was to do with the Applicant use of this trade mark: on its goods. But the trade mark applied for was “UNIVERSAL GYM”.

In considering the issue of whether consumers would think that, or wonder whether the marks were related, the Hearing Officer noted that,

“It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products”.

Considering the likelihood that the marks would be recalled imperfectly, that the companies provided goods in the same class, and that both trade marks shared UNIVERSAL as the main element, the Hearing Officer concluded that there was a likelihood that consumers would think that the products bearing the trade marks had originated from the same provider, and so the marks were deceptively similar.

Evidence of use from the Applicant which might have established a defence of honest concurrent use was deemed quite properly to be inadequate. There was no sales evidence, and little evidence before the filing date.

As the Opponent established the ground of opposition under s 44, the Hearing Officer revoked the application for registration.

The second decision:

In this dispute, the contest was fundamentally an impression of resemblance or dissimilarity. From the decision, here are the two marks side-by-side:

The hearing officer formed the view that, “Based on such a side by side comparison I am satisfied that “the total impression of resemblance or dissimilarity that emerges” is rather one of dissimilarity and this is why I conclude the parties’ marks are not substantially identical. “

An argument that the brands were substantially identical with or deceptively similar to each other failed because, this time, the success by the applicant to establish honest concurrent use. The hearing officer noted in his conclusion that “the parties’ respective marks having coexisted for some six years before the Priority Date without apparent difficulty.”

In the first decision, the applicant’ made a submission that “The word “ UNIVERSAL ” is a familiar and common English word with known meanings and there are over 160 trade mark registration across all classes which contain or consist of this exact word which decreases the likelihood of deception or confusion.” Knowing that there are so many other traders using the brand “UNIVERSAL”, why choose a brand like “UNIVERSAL”? This is the “price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.” (per Stephen J at [22], Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216 (19 April 1978))