TMO gives ENO owner indigestion

The Trade Marks office has rejected Beecham’s opposition to registration to three trade mark applications in the name of ADM consisting of or containing the word ENOVA in Beecham Group Plc v ADM Kao LLC [2009] ATMO 61.

Beecham’s opposition relied primarily on section 44, citing its prior registration for the mark ENO and the use of that mark in Australia for close to 100 years either alone or as part of a “family” of ENO marks. Beecham also raised in its written submissions a prior registration owned by a related company for the mark EUNOVA.

In relation to the ENO mark, the hearing officer considered that it was neither substantially identical nor deceptively similar to the applicant’s ENOVA marks, noting that:

I believe that the significant differences, both visual and aural, between the ENO and ENOVA trade marks militate against the possibility that they would leave deceptively similar impressions in the minds of potential customers

In relation to the EUNOVA mark, the hearing officer referred to passages in the text Shanahan’s Australian Law of Trade Marks and Passing Off 4th ed to the effect that in an opposition, “cogent evidence” was required where the ground of opposition relied upon could have been raised during examination but was not and in particular that:

In addition to the usual burden on an opponent, there are the problems that an examiner has already decided that an objection under s 44(1) or (2) could not be established

In this case, despite no indication that the original examiner considered the prior EUNOVA mark, the hearing officer concluded that:

absent both prior notice and supporting evidence relating to the EUNOVA trade mark, I am prepared to lean against a finding of deceptive similarity with the applicant’s ENOVA trade marks

These findings also resulted in a failure to establish the grounds of opposition raised under sections 42(b) and 60.