The importance of ensuring that trademark registrations accurately reflect the trademarks used has been highlighted by the recent decision of a delegate of the trademark registry at Planet Plumbing SW Works Pty Ltd against Green Planet Maintenance Pty Ltd  ATM 32.
The Hearing Officer ordered that registrations for two “Planet Plumbing” logos be removed from the register after the owner, Planet Plumbing SW Works Pty Ltd (PP) failed to oppose a non-use registration from Green Planet Plumbing Pty Ltd (IT DOES NOT MATTER) under Section 92 of the Trade Marks Act 1995 (Cth) (The act).
The representations of the trademarks originally registered in 1999 and 2009 were as follows:
(Brand No. 1319175) (Brand No. 812026)
However, since 2010 PP has been using a different form of the logo, which was registered as follows:
If a party requests the removal of a trademark for non-use, Section 100 of the Act requires the trademark owner to demonstrate that they used the trademark in good faith “or the trademark with additions or changes that do not materially affect its identity” on the goods or services for which it is registered. This use must have taken place within the period of 3 years that ends one month before the submission of the request for non-use (Relevant period).
Since PP had been using the current mark during the relevant period, PP challenged the request for non-use, claiming that the marks in question had been used with “additions or changes that do not materially affect their identity”.
PP argued that the word element “planet sanitary” and the device elements in the controversial brands were separable, with the device elements simply adding “flavor and emphasis”. The words “Planet Klempner” continued to be used during the relevant period, which was the use of the controversial trademarks after the appraisal.
However, the Hearing Officer rejected this proposal and adopted the “substantial similarity” test as pronounced against Link Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414 by Windeyer J in Shell Co (Aust) Ltd , the examination of whether “additions or changes” affect the “essential identity” of a mark involves a direct comparison of the mark with the alleged use.
In a direct comparison of the controversial brands with the current brand, the hearing officer came to the conclusion that “an overall impression of dissimilarity between the respective brands arises when it matters”. [their] indispensable characteristics “. Despite some similarities between the words of the contested marks, the other elements were also considered to be essential and salient features and these elements lacked similarity.
Since PP had clearly intended to abandon the old logos that were featured in the controversial trademarks in favor of the current trademark, the Hearing Officer ruled against any discretion in order to maintain the registrations.
The central theses
This decision underscores the importance of carefully selecting which trademarks to register and ensuring that trademark protection strategies are reviewed whenever a business is renamed. Trademark registrations can be removed due to non-use if the trademark actually used has significant differences from the registered trademark, even if they have common word elements.
In many cases it is advisable to aim for a separate registration of the brand name as a simple word mark. In this case, if PP had simply registered the words PLANET PLUMBING, it might have required only a single registration instead of three and might have successfully opposed the removal of the disputed marks. When a composite logo trademark is registered and renamed, it is sometimes possible to adapt the appearance of the trademark to the current usage. In other cases, a new logo can justify a new registration instead. In both cases, rebranding offers the opportunity to review and improve a company’s brand protection.
Phoebe Naylor also contributed to this article.