IP SERVICE INTERNATIONAL successfully defends Oppositions filed against PATRIOT Trade Mark Applications in Australia

IP SERVICE INTERNATIONAL was successful in defending the "PATRIOT" Trade Mark Applications in Australia for Sunland RV Pty Ltd.

Key Issues

The case concerned two parallel oppositions filed against our client’s applications to register the trade marks PATRIOT and a PATRIOT logo for Class 12 goods including caravans, mobile homes and related towing/camping vehicle components. The opponent pressed grounds under ss 44, 58, 58A and 60 (with a s 62 ground not pressed). The relevant assessment dates were the filing dates of our client’s applications (27 March 2015 for the word mark and 8 April 2016 for the logo mark).

Findings

On the evidence, the delegate found that our client had used the applied-for marks in relation to caravans since 2010, with significant and continuous sales and promotion, and that the marks functioned as trade marks in their own right (not merely as descriptors under a house brand). The opponent was found to have used its marks (including PATRIOT CAMPERS and a corresponding logo) in relation to camper trailers from mid-to-late 2013. While the goods were not identical, the delegate treated caravans and camper trailers as “the same kind of thing” for the purposes of the ownership and reputation analyses, reflecting a practical marketplace overlap.

The ownership challenge under s 58 failed because the delegate concluded our client was the senior user of its marks for the relevant field of recreational vehicles and associated goods, and the opponent could not establish an earlier ownership entitlement. The reputation ground under s 60 also failed. Although the delegate accepted the opponent had developed a modest reputation in its marks by the relevant dates, the decision emphasised that s 60 requires a real tangible likelihood of deception or confusion arising because of the opponent’s reputation. In context, the delegate found the stronger and earlier reputation lay with our client (continuous use from 2010), and that any market confusion risk would more likely flow from the opponent’s use rather than from our client’s use of the applied-for marks. Accordingly, the opponent did not establish that our client’s use would be likely to deceive or cause confusion because of the opponent’s reputation.

For the logo application, the delegate further considered s 44 and s 58A. While the opponent’s earlier-filed marks triggered the technical operation of s 44(1) on the face of it, our client’s logo application had been accepted on the basis of continuous prior use under s 44(4), and the delegate saw no basis to disturb that acceptance. The opponent’s reliance on s 58A—which is designed to counter a s 44(4) acceptance where the opponent can show earlier and continuous use—also failed because the opponent was not the first user in the relevant space and could not satisfy the statutory prerequisites.

Outcome

In summary, no ground of opposition was established. Both of our client’s applications were allowed to proceed to registration, and costs were awarded against the opponent in line with the usual rule that costs follow the event.

Our client was represented by Max Steinhausen (2018 ATMO 59).

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