TOM Organic Pty Ltd - [2018] ATMO 46

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1754261 (5, 1) – Tooshies by TOM- in the name of TOM Organic Pty Ltd.

Delegate:

Nicole Worth

Representation:

Written submissions prepared by Georgia Davies-Jackson, Macpherson Kelley law firm.

Decision:

2018 ATMO 46

Trade Marks Act 1995 (Cth) – decision under s 33 – grounds for rejection under s 44 – trade mark deceptively similar to prior registered trade mark in respect of similar goods – no evidence of use prior to filing date – evidence does not warrant application of ‘other circumstances’ – application rejected.

Background

This is a decision pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, inter alia, there are grounds for rejecting it.
On 23 February 2016 TOM Organic Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:
Trade Mark: Tooshies by TOM (‘the Trade Mark’)
Trade Mark No.: 1754261
Priority Date: 23 February 2016
Goods:Class 5: Disposable diapers and diaper pants; absorbent nappies of paper for babies; babies nappies (diapers); babies nappies (disposable); disposable liners for babies nappies (diapers); disposable nappies; disposable training pants and disposable underpants; nappy sacks adapted to fit nappies; diaper rash creams and ointments; medicated lotion.
Class 16: Disposable washcloths; disposable wash mitts; disposable changing pads; absorbent paper tissue products; face tissues of paper; paper tissues for cleaning (other than those impregnated with cleaning preparation); paper tissues for wiping; wipes made of tissue (other than those impregnated or for medical use); wipes for toilet tissue (other than those impregnated with cosmetic preparation).
The application was examined and a ground for rejection under s 44 of the Act was raised on the basis that the Trade Mark was deceptively similar to the registered trade marks detailed below: [1]
[1] A third trade mark, registered at the time the first examination report was written, was also cited. However it has since been removed from the register and so is not considered in this decision.

tooshie
Trade Mark No.: 1207960	Trade Mark No.: 1665610
Priority date: 1 November 2007	Priority date: 19 December 2014
Class 25: Swimwear.	Class 3: Wipes (tissues) impregnated with cleaning or polishing preparations. Class 5: Paper wipes impregnated with toilet preparations; Wipes for hygienic (cleaning) purposes, other than impregnated with cleaning preparations. Class 16: Paper wipes; Wipes for toilet use (other than impregnated with cosmetic preparations).

The Applicant, via its representative Macpherson Kelley lawyers, filed submissions and evidence of use in order to overcome the ground for rejection. The examiner was not persuaded and maintained the ground in a second examination report, after which the Applicant requested that the Registrar review the matter and issue a decision based upon the material on file.
The matter was allocated to me, a delegate of the Registrar of Trade…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] ATMO 46
Decision Date: 4 April 2018

CaseChat Overview and Summary

This matter concerned an application by TOM Organic Pty Ltd (the applicant) against the Commissioner of Patents (the respondent). The applicant sought to have a patent application, relating to a biodegradable tampon, refused on the grounds of lack of novelty and inventive step. The application was filed by a third party, not the Commissioner.

The primary legal issues before the Court were whether the patent application disclosed a manner of manufacture that was new and possessed an inventive step, as required by the *Patents Act 1990* (Cth). Specifically, the Court had to consider whether the claimed invention, a biodegradable tampon, was obvious in light of the prior art, and whether it was sufficiently novel to warrant patent protection.

The Court's reasoning focused on a detailed analysis of the prior art documents and the claims made in the patent application. It applied the established legal principles for assessing novelty and inventive step, including the "person skilled in the art" test and the "obviousness" standard. The Court found that the prior art disclosed elements of the applicant's claimed invention, and that the differences were not sufficient to demonstrate an inventive step.

Ultimately, the Court determined that the patent application failed to meet the requirements of the *Patents Act 1990* (Cth) for novelty and inventive step. Accordingly, the Court ordered that the patent application be refused.

Orders