The importance of ensuring that trademark registrations accurately reflect the marks used has been clearly highlighted by the recent decision of a delegate of the Registrar of Trade Marks in Planet Plumbing SW Works Pty Ltd v Green Planet Maintenance Pty Ltd  ATMOS 32.
The Hearing Officer has ordered that registrations for two “Planet Plumbing” logos be removed from the register after the owner, Planet Plumbing SW Works Pty Ltd (PP) has not defended itself against any application not used by Green Planet Plumbing Pty Ltd (NO PROBLEM) under section 92 of the Trademark Act 1995 (For instance) (the deed).
The images of the marks, originally registered in 1999 and 2009, were as follows:
(Trademark No. 1319175) (Trademark No. 812026)
However, PP has been using a different form of logo since 2010, which is registered as follows:
Under Section 100 of the Act, the trademark owner must prove that he has used the trademark, “or the trademark with additions or changes that do not materially affect his identity”, in good faith where a party has authorized the removal of a trademark for do not wish to use. for the goods or services for which it is registered. This use must have taken place within the period of 3 years ending one month before the application for non-use was submitted (Relevant period).
Since PP had used the Current Mark during the Relevant Period, PP opposed the non-use of the application by claiming that the Disputed Marks had been used with “additions or alterations that do not substantially affect their identity”.
PP argued that the word element “planet sanitary” and the appliance elements in the contested brands were separable, with the appliance elements simply adding “flavor and emphasis”. The words “planet plumbing” were still used in the relevant time period, which, according to PP, constituted the use of the disputed marks.
However, the Hearing Officer rejected this proposal and adopted the application of the “substantial similarity” test as articulated by Windeyer J Shell Co (Aust) Ltd v Link Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 on 414, namely the consideration of whether “additions or alterations” affect the “substantial identity” of a trademark implies a side-by-side comparison of the trademark with the alleged use.
In a side-by-side comparison of the Disputed Brands with the Current Brand, the Hearing Officer found that “an overall impression of dissimilarity arises between the respective brands when taking into account [their] essential features”. Despite some similarities between the words of the Disputed Marks, the other elements were also considered essential and salient features and these elements lacked correspondence.
Since PP clearly intended to do away with the old logos displayed in the Disputed Marks in favor of the Current Brand, the Hearing Officer decided not to exercise discretion to maintain the registrations.
Key learning points
This decision highlights the importance of carefully selecting the trademarks to register and ensuring that trademark protection strategies are reconsidered when a company undergoes any form of rebranding. Trademark registrations may be vulnerable to deletion for disuse where the trademark actually used is materially different from the registered trademark, even if they share common word elements.
In many cases it is appropriate to strive for separate registration of the name of a trademark as an ordinary word mark. In this case, if PP had simply registered the words PLANET PLUMBING, it may have only needed one registration instead of three, and may have successfully resisted the removal of the Disputed Marks. When a composite logo brand is registered and undergoes a rebranding, it is sometimes possible to adapt the image of the brand to current usage. In other cases, a new logo may justify a new registration instead. In either scenario, a rebrand provides an opportunity to consider and enhance a company’s trademark protection.
Phoebe Naylor also contributed to this article.