Publications / Intellectual Property
A recent Australian trade mark opposition decision highlights the importance of considering whether a trade mark contains elements (such as words or colours) that are likely to deceive or cause confusion.
Virtual Couch Industries Sdn Bhd (Applicant) filed a trade mark application for a series of three trade marks, the third mark in the series being the word ‘Rubelli’ imposed over the colours green, white and red. The application claimed furniture in class 20. The trade mark application was opposed by Rubelli S.p.A (Opponent) on a number of grounds.
The Opponent argued that the presence of the colours green, white and red in the trade mark (set out as depicted in the Italian flag) gave rise to the connotation that the Applicant’s furniture goods are made in or relate to Italy in some way. The Opponent also argued that the Applicant’s use of the word ‘Rubelli’ in the mark further gave rise to the connotation that there is some affiliation or association between the Applicant and the Opponent (who also used and had a registered trade mark for ‘Rubelli’). This second argument, however, was not successful as the Hearing Officer was not satisfied that the Opponent had a sufficient reputation in the ‘Rubelli’ name.
In considering whether the use of the tricolour combination in the trade mark was sufficient to invoke the ground of opposition set out in section 43 of the Trade Marks Act 1995 (Cth), Hearing Officer Lyons held that:
‘Within the context of the goods [furniture] there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion. The goods are of a kind where Italian products have held pride of place in the international market. The tricolours of the third trade mark would, in Australia, readily be recognised as the Italian flag.’ 
The Hearing Officer also concluded that the word ‘Rubelli’ would readily be perceived by consumers as an Italian family name and not as a Malaysian colloquial slag of ‘lu beli’ meaning ‘you buy’ in English (as put forward by the Applicant).
As a result of the decision, it became a condition of registration of the trade mark that the third mark in the series would only be used on goods that were either made in Italy or from materials made in Italy.
Trade mark owners should be careful when choosing the elements in their trade marks as certain elements may convey a connotation that results in confusion. A connotation can arise from colours, graphics, words, or a combination of any of these elements in a trade mark. In particular, it is important to consider each of the individual elements in a trade mark and their respective connotations in the context of the goods and services being claimed.
This decision also reinforces the importance of seeking advice on the registrability of a trade mark prior to filing an application. Seeking advice early can reduce the risk of third party oppositions or objections being raised during the formal examination process.
For further assistance or enquiries please contact:
Malcolm McBratney on 07 3233 8878
David Downie on 07 3233 8842
Belinda Breakspear 07 3233 8968
 Decision number 2011 ATMO 3 of 18 January 2011 at 73.
Focus covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. Focus is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.