HOT TUNA IP LIMITED V SELECT GMBH UNTERNEHMEN FUR ZEITARBEIT [2014] ATMO 49

Hot Tuna opposed the extension of protection of an International Registration in Australia for the below device covering goods in Classes 25 and 32.

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Hot Tuna established use of its ‘Fish in Circle’ trade mark (pictured below) in 1979 and has been continuously using the device (in various forms) since. The Hearing Officer hinted that the opponent may not be well placed to rely on section 60, as it appears as though the brand recognition it enjoyed in the 1980’s and 1990’s had ‘seriously waned’ since then.

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In any event, the Hearing Officer, after considering both sides submissions in relation to the differences between the respective trade marks, was swayed by evidence led by the opponent which showed how the applicant has been using its trade mark. From this evidence the Hearing Officer particularly noted that the terms ‘KILLERFISH’ and ‘HOT ENERGY’ were often used by the applicant in close association with its device trade mark and were also used in relation to surf wear.

Accordingly, the Hearing Officer found that ‘[t]he goods are identical. The holder targets the same consumers. The risk of confusion is more than significant.’ The International Registration was refused protection in Australia for the Class 25 goods.

To view the Office decision, click here.