The worth of guaranteeing trademark registrations accurately reflect the marks in utilization has been introduced into sharp reduction by the new conclusion of a Delegate of the Registrar of Trade Marks in Earth Plumbing SW Functions Pty Ltd v Green Planet Servicing Pty Ltd [2021] ATMO 32.
The Hearing Officer directed that registrations for two “Planet Plumbing” logos be removed from the Register after the owner, World Plumbing SW Operates Pty Ltd (PP) unsuccessful to defend towards a non-use software by Eco-friendly Earth Plumbing Pty Ltd (GPP) underneath portion 92 of the Trade Marks Act 1995 (Cth) (the Act).
The representations of the marks, originally registered in 1999 and 2009, were as follows:
(Trademark no. 1319175) (Trademark no. 812026)
(Disputed Marks)
On the other hand, PP experienced considering that 2010 been working with a distinctive variety of symbol, which was registered as follows:
(Existing Mark)
Below section 100 of the Act, exactly where a occasion seeks removal of a trademark for non-use, the trademark proprietor will have to prove that it has utilized the trademark, “or the trademark with additions or alterations not substantially affecting its identity”, in great religion for the items or expert services in respect of which it is registered. This use ought to have transpired within the time period of 3 decades ending 1 thirty day period right before the non-use application was filed (Suitable Period of time).
As PP had been applying the Current Mark throughout the Related Time period, PP opposed the non-use application by proclaiming the Disputed Marks had been employed with “additions or alterations that do not considerably have an impact on their identity”.
PP argued the word element “planet plumbing” and the machine components in the Disputed Marks had been severable, with the unit aspects basically introducing “flavour and emphasis”. The “planet plumbing” terms had continued to be utilized throughout the Suitable Time period, which PP argued constituted use of the Disputed Marks.
The Listening to Officer, however, turned down this proposition and adopted the software of the “substantial similarity” check as enunciated by Windeyer J in Shell Co (Aust) Ltd v Url Esso Common Oil (Aust) Ltd (1963) 109 CLR 407 at 414, namely, consideration of whether “additions or alterations” have an affect on the “substantial identity” of a Trade Mark includes a facet by aspect comparison of the trademark with the alleged use.
Upon a aspect-by-aspect comparison of the Disputed Marks with the Recent Mark, the Hearing Officer viewed as that “a full perception of dissimilarity emerges amongst the respective logos when regard is had to [their] vital features”. Irrespective of some similarities concerning the words of the Disputed Marks, the other factors had been also regarded as critical and popular attributes and these features lacked similarity.
Presented that PP had plainly supposed to abandon the outdated logos represented in the Disputed Marks in favour of the Latest Mark, the Hearing Officer decided towards using discretionary electrical power to manage the registrations.
Essential Takeaways
This conclusion highlights the importance of cautiously choosing which trademarks to register and to ensure that trademark security methods are revisited whenever a company undergoes any sort of rebranding. Trademark registrations may perhaps be vulnerable to removal for non-use exactly where the trademark really employed bears materials differences from the trademark that is registered, even if they share frequent word features.
In quite a few instances, it is proper to search for separate registration of the name of a brand as a simple wordmark. In this case, experienced PP just registered the terms Earth PLUMBING, it may possibly have only demanded a single registration, alternatively than 3, and may well have correctly opposed the elimination of the Disputed Marks. Exactly where a composite logo mark is registered and undergoes rebranding, it is often achievable to amend the illustration of the mark to reflect present-day use. In other scenarios, a new brand may well rather warrant a new registration. In either scenario, a rebrand represents an chance to look at and increase upon any business’s trademark safety.
Phoebe Naylor also contributed to this posting.