Health World Limited v Endura Ltd [2015] ATMO 66 (9 July 2015)

Health World opposed the extension of protection in Australia of Endura’s trade mark ENDURA in relation to clothing specifically for cyclists in Class 25.

The opponent’s evidence largely contained examples of use of its ENDURA trade mark in relation to sun visors and caps (as well as the opponent’s primary business of nutritional supplements).

Under the section 58 grounds, the only goods on which the opponent was able to demonstrate prior use of its trade mark were sun visors and caps. However, the Hearing Officer found that ‘headwear for cyclists are not goods of the same kind as sun visors and caps’. Accordingly, the section 58 ground failed.

On section 60, the Hearing Officer noted that ‘the Opponent’s trade marks had, at the filing date, a reputation in relation to nutritional supplements but am not satisfied that it then had a reputation in relation to any clothing or headwear’.

The Hearing Officer found it unlikely that anyone familiar with the opponent’s reputation in nutritional supplements would assume a connection with the applicant’s cycling goods. In support of his view, the Hearing Officer noted that there has been several years of coexisting use, during which time no confusion appears to have occurred.

The opposition failed on all grounds.

To view the Office decision, click here.