The relevance of guaranteeing trademark registrations accurately replicate the marks in use has been introduced into sharp aid by the latest final decision of a Delegate of the Registrar of Trade Marks in World Plumbing SW Functions Pty Ltd v Green World Servicing Pty Ltd [2021] ATMO 32.
The Listening to Officer directed that registrations for two “Planet Plumbing” logos be taken off from the Register soon after the owner, World Plumbing SW Works Pty Ltd (PP) unsuccessful to protect versus a non-use application by Eco-friendly Earth Plumbing Pty Ltd (GPP) under section 92 of the Trade Marks Act 1995 (Cth) (the Act).
The representations of the marks, at first registered in 1999 and 2009, had been as follows:
(Trademark no. 1319175) (Trademark no. 812026)
(Disputed Marks)
Nevertheless, PP had because 2010 been using a various type of symbol, which was registered as follows:
(Current Mark)
Less than part 100 of the Act, the place a party seeks removing of a trademark for non-use, the trademark operator ought to prove that it has used the trademark, “or the trademark with additions or alterations not considerably influencing its identity”, in good religion for the items or companies in respect of which it is registered. This use must have occurred within the period of 3 many years ending one particular month before the non-use application was submitted (Relevant Period of time).
As PP had been employing the Existing Mark throughout the Related Time period, PP opposed the non-use application by declaring the Disputed Marks experienced been utilized with “additions or alterations that do not considerably impact their identity”.
PP argued the phrase component “planet plumbing” and the unit components in the Disputed Marks were being severable, with the machine elements simply including “flavour and emphasis”. The “planet plumbing” words had ongoing to be utilised throughout the Related Interval, which PP argued constituted use of the Disputed Marks.
The Hearing Officer, on the other hand, rejected this proposition and adopted the application of the “substantial similarity” exam as enunciated by Windeyer J in Shell Co (Aust) Ltd v Hyperlink Esso Regular Oil (Aust) Ltd (1963) 109 CLR 407 at 414, specifically, thing to consider of no matter if “additions or alterations” affect the “substantial identity” of a Trade Mark entails a aspect by aspect comparison of the trademark with the alleged use.
On a side-by-side comparison of the Disputed Marks with the Current Mark, the Hearing Officer considered that “a overall effect of dissimilarity emerges concerning the respective emblems when regard is experienced to [their] critical features”. Inspite of some similarities amongst the phrases of the Disputed Marks, the other factors ended up also thought of vital and prominent functions and these aspects lacked similarity.
Supplied that PP had plainly intended to abandon the previous logos represented in the Disputed Marks in favour of the Existing Mark, the Hearing Officer made a decision against employing discretionary energy to preserve the registrations.
Vital Takeaways
This determination highlights the significance of meticulously deciding upon which emblems to sign-up and to be certain that trademark defense techniques are revisited when a business undergoes any type of rebranding. Trademark registrations could be susceptible to elimination for non-use wherever the trademark truly applied bears substance variations from the trademark that is registered, even if they share typical term elements.
In lots of instances, it is proper to find independent registration of the title of a brand as a basic wordmark. In this scenario, experienced PP simply registered the words and phrases Earth PLUMBING, it may perhaps have only demanded a one registration, rather than a few, and could possibly have successfully opposed the elimination of the Disputed Marks. The place a composite brand mark is registered and undergoes rebranding, it is sometimes possible to amend the representation of the mark to replicate existing use. In other occasions, a new logo may instead warrant a new registration. In either scenario, a rebrand signifies an prospect to think about and boost on any business’s trademark safety.
Phoebe Naylor also contributed to this short article.
