Wow Tours Pty Ltd (the Applicant) provides holiday and tour services for people with physical and intellectual disabilities.
On 22 November 2016, the Applicant sought to register a logo featuring the words “WOW TOURS” as a trade mark (the Logo).
Wow! Travel Pty Ltd (the Opponent), a travel agency, was the registered owner of Australian trade mark 1589218 for the word “WOW”, which it used alongside variations including “WOW Travel”, WOW! and “WOW! Travel” (the Opponent’s Trade Mark).
Initially, the examiner found the Logo to be deceptively similar to the Opponent’s Trade Mark. The Applicant then produced submissions arguing that it had continually used the Logo prior to the registration of the Opponent’s Trade Mark. The examiner accepted this argument and approved the Logo for registration.
The Opponent then commenced opposition proceedings through IP Australia, seeking to remove the Applicant’s Logo from the trade mark register.
The Opposition proceeded to a formal hearing before an IP Australia Delegate.
Under section 58A of the Trade Marks Act, the Opponent was required to prove that it had continuously used its trade mark (in respect of similar services) before the Applicant first used the Logo.
On the evidence, it was clear that the Opponent’s Trade Mark was used prior to the Logo.
The services offered by both parties were found to be ‘similar’, as the Opponent’s registration included “travel tours” and the Applicant’s services were a subset of “travel tours”.
Further, the Delegate conducted a side-by-side comparison of both marks, and found that they were deceptively similar for the following reasons:
Accordingly, the Delegate found that the opposition was successful, and refused to register the Logo as a trade mark. Click here to see the logo and read the full decision.
Applying to register a trade mark is not always a simple process. Even after an examiner has approved your application for registration, a third party may commence opposition proceedings.
Opposition proceedings require both parties to prepare and file submissions and evidence.
It is important to keep records of trade mark use, so that you can provide evidence of use should a trade mark dispute ever arise. It is also important to use it consistently to build up your evidence, as well as the reputation in it.
Further, it is important to monitor the Australian trade mark register, to check whether any similar trade marks have been approved for registration.
Finally, it is sensible, before selecting a logo, incurring design costs and beginning to use it, to undertake investigations to determine if there are any obvious impediments to successful registration. Failure to properly investigate has been viewed by the courts as acting in bad faith.
If you are considering registering a trade mark, or require assistance in a trade mark dispute, please do not hesitate to contact Iain Freeman or Andrew Sutton. We can assist in undertaking preliminary investigations of the trade mark databases.
