DONZENAC PTY LTD V MCV ENVIROWORKS PTY LTD [2014] ATMO 42

This case concerned an opposition to the mark ENVIROBLANKET in respect of class 1 soil and related goods and class 37 landscaping and related services.

The application was opposed on several grounds.

Prior to the hearing the applicant sought an extension of time to file further evidence from its director, under Trade Mark Regulation 5.15. This extension was opposed by the opponent, however the Delegate found that the evidence sought to be served would not ultimately be relevant to his decision in any event, and so refused the extension(as doing so would not prejudice either party).

The opponent was the owner of the ECOBLANKET mark, and owned intellectual property rights in respect of a product used in organic compost material.

Prior to the application, there was a dispute between the parties as to the use of the mark ECOBLANKET by the applicant both at its website (which it asserted was unintended) and by way of obtaining the term as a keyword in Google Adwords. After an exchange between the parties the applicant agreed not to use the term ECOBLANKET or any similar term.

The Delegate considered the opposition grounds of s 60 that the mark applied for was similar to a trade mark that had acquired a reputation in Australia. While the Delegate found that the mark of the opponent’s (ECOBLANKET) had acquired a significant reputation in Australia, no persons would be caused to wonder whether it might not be the case that the two products are closely related products and services come from the same source.

As such, the grounds under s 42(b) that the use of the mark would be contrary to the law (in that if offended s 18 of the Australian Consumer Law) was not available as the test for deception under that statute was higher than that considered under section 60 of the Trade Marks Act.

Finally, in relation to a claim under s 62A that the mark is applied for in bad faith, the Delegate found that while behaviour falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the area would amount to bad faith, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not without more amount to bad faith.

As such the mark proceeded to registration.

To view the Office decision, click here.