YIP Legal

19/11/2025

TM Opposition Case: PAULLIE

Paullie Skin IP Pty Ltd v Amy Ventures Pty Ltd [2025] ATMO 208 (3 October 2025): https://lnkd.in/gZC6REp3

Congratulations to our client Amy Ventures for its defence of opposition against its trade mark PAULLIE against skincare brand Paullie Skin! Amy Ventures is the creator of the fabulous Perth-based fashion label Pawlie (www.pawlie.com.au) and applied for registration of the trade mark PAULLIE as a proposed sister apparel brand shortly after the announcement of a new range of skincare products under the same name by popular social media influencer, Anna Paul.

Key findings from that decision below:

🐾 Product launch announcement not sufficient to establish reputation: The Opponent provided very little evidence demonstrating pre-launch sales and had only marketed its products for 3 days to an indeterminate number of social media viewers prior to the Application. After launch sales were primarily attributed to Anna Paul's personal reputation (rather than to PAULLIE as a brand name), the nature of the foods being promoted was unclear, and otherwise very little evidence of general recognition of the brand was provided.

🐾 Pre-emptive application not in bad faith: The Applicant provided sufficient explanation as to why the trade mark PAULLIE was chosen, including previous use of that word as part of a style name for leggings. Mere awareness of the announcement of the Opponent's PAULLIE brand was not enough to give rise to bad faith and the application was consistent with protection of the Applicant's reasonably perceived rights.

🐾 Mark intended to be used: registration and redirection of the domain name www.paullie.com.au by the Applicant to its primary website www.pawlie.com.au did not speak to its intention to use the mark and did not indicate filing for speculative or defensive reasons. Its previous use of PAULLIE as part of a style name also supported an intention to use the mark on clothing.

Ultimately, Amy Ventures was successful in maintaining its entitlement to registration and the Hearing Officer was satisfied that the mark should proceed to registration.

Full case summary can be found at: https://lnkd.in/g_HXvfV5

07/08/2025

TM Opposition Case: OUTSYSTEMS

Outsystems Pty Ltd v OUTSYSTEMS - SOFTWARE EM REDE S.A [2025] ATMO 119 (18 June 2025): https://lnkd.in/gSr2K55e

Congratulations to our client Outsystems Pty Ltd for its successful opposition against Portugese development platform, Outsystems! Outsystems (Australia) successfully challenged the basis for acceptance of Outsystems (Portugal)'s trade marks which were accepted on the finding of evidence of prior continuous use, notwithstanding the earlier registration of the OUTSYSTEMS trade mark by Outsystems (Australia) (which was itself also unsuccessfully challenged by Outsystems (Portugal) in 2022): https://lnkd.in/gaifjtJc

Key findings from that decision below:

🧑‍🏫Comparison of software for different purposes: while the purposes of the respective software (employee management software v application development software) covered by the competing applications was found to be different, that distinction to the average consumer of those products was not clear. Therefore, it was accepted that those claims should be treated as similar.

🧑‍🏫Prior Continuous Use Not Established: the evidence submitted in support of prior use when tested was not sufficient to establish provision of goods and services in association with the mark in Australia, or continuity of such use.

🧑‍🏫Honest Concurrent Use Not Established: the evidence submitted was not sufficient to establish continuity of use.

Ultimately, Outsystems (Australia) was successful in establishing that the deceptive similarity grounds should be maintained and the Hearing Officer was satisfied that Outsystems (Portugal)'s marks should be refused registration.

Full case summary can be found at: https://lnkd.in/gqiaYstT

29/05/2025

TM Opposition Case: UBER TUTORS

Uber Technologies Inc v Uber Tutors Pty Ltd [2025] ATMO 78 (1 May 2025) (UBER TUTORS): https://lnkd.in/gAaXd6DV

Congratulations to our client Uber Tutors Pty Ltd for its successful defence of its UBER TUTORS trade mark! Uber Technologies pursued the opposition on 4 separate grounds, however none were found to be established.

Key findings from that decision below:

🧑‍🏫Reputation and Likelihood of Confusion: while "UBER" and "UberEats" had significant reputation in transport and delivery services, this reputation did not extend to education services. The visual and conceptual differences between "UBER TUTORS" and Uber's trade marks were sufficient to avoid confusion.

🧑‍🏫Use Contrary to Law: the use of "UBER TUTORS" would not constitute misleading or deceptive conduct under the Australian Consumer Law (ACL) and/or passing off, and did not falsely suggest an association with Uber.

🧑‍🏫Bad Faith: Evidence of a single Instagram post by the Applicant using hashtags like "hashtag " and "hashtag ." was not sufficient to prove bad faith. The Applicant provided a legitimate explanation for choosing the name "UBER TUTORS," based on the German meaning of "über" (above or beyond).

🧑‍🏫Substantially Identical or Deceptively Similar Marks: "UBER TUTORS" was not deceptively similar to the registered marks "UBER AI LABS" and "UBERELEVATE," despite covering similar educational services

Ultimately, Uber Tech failed to establish any of those grounds and the Hearing Officer was satisfied that the UBER TUTORS mark should be permitted to proceed to registration.

Full case summary can be found at: https://lnkd.in/gNkRpPKb

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07/10/2024

TM Opposition Case: VICKY DRIVING SCHOOL

Toor v Sharma [2024] ATMO 158: https://lnkd.in/gEECr_7Y

Congratulations to our client Varinder Toor (https://vickydrivingschool.com.au) for successful opposition to protect his VICKY DRIVING SCHOOL trade mark! The opposition was successful on the grounds of lack of ownership by the Applicant.

Mr Sharma's trade mark application for VICKY DRIVING SCHOOL had previously been accepted (despite earlier registrations for the same mark by Mr Toor) on the provision of evidence of prior continuous use.

However, Mr Toor was able to establish with evidence that he had been operating his driving school using the same trading name prior to any use by Mr Sharma, and therefore was the true owner of the mark under common law.

The decision highlights the importance of the principle of first use in establishing trade mark ownership and how this can be proven to prevent registration by others.

Our full case summary can be found at: https://lnkd.in/g7sMG8Vr

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07/10/2024

Thanks to Agha Juice Australia for hosting a wonderful Brand Celebration dinner at Afghan Zamarut Restaurant last week. We enjoyed some amazing cuisine and had the pleasure to meet many of the Agha Juice franchisees from across Melbourne. I can also highly recommend the delicious Mango/pistachio shakes from Agha Juice Sunshine around the corner!

07/05/2024

TM Opposition Case: 24MANTRA ORGANIC v MANTRA- LOVE EVERY SPOONFUL

SRESTA NATURAL BIO PRODUCTS PRIVATE LIMITED v Ashok Bhimaraju [2024] ATMO 41 https://lnkd.in/gwuwmHn5

Well done to our client Ashok Bhimaraju for successful defence of his MANTRA trade mark! The opposition was pursued on both reputational and bad faith grounds.

The Opponent's primary evidence in support of establishing a relevant reputation consisted of invoices for importation of food products into Australia, however it was not able to prove that the mark had actually been used in the packaging or promotion of the food products it was importing, nor that the MANTRA mark had been adopted in bad faith by Bhimaraju.

The decision highlights the importance of demonstrating use of a mark as applied to products (ie. labelling, packaging) in terms of establishing reputational rights to a trade mark.

Our full case summary can be found at: https://lnkd.in/gK6ERbW7

15/03/2024

TM Opposition Case: GOOGLE v KOOGLE

Google LLC v Chitkara [2024] ATMO 27 https://lnkd.in/gfWSJTGw

Congrats to our client Koogle (www.koogle.net.au
) for its successful defence of its trade mark rights against Google no less! Koogle is a Sydney-based smart rideshare platform which aims to provide customers with the perfect ride, and hopefully now ready to take Australia by storm!

Google has previously had some success in the Trade Marks Office opposing other -OOGLE marks such as YOOGLE and TROOGLE. However, this particular decision turned more on the nature of the services provided between the parties rather than comparison of the marks themselves.

Google’s key arguments focused on establishing that there was sufficient connection between the navigational services provided through its Google Maps service and the kinds of services provided by a rideshare provider (being the services associated with the Koogle mark). Ultimately, Google was not able to establish a sufficient connection between those services to establish a likelihood of confusion between the marks.

Key Takeaways (for the TM Attorneys):

Dissimilar Services (section 44)

🚗Rideshare, taxi, passenger service, and carpooling services are NOT similar to locational, mapping and geographical information services.
🚗Online booking passenger services are NOT similar to electronic storage services.

No Likelihood of Confusion (section 60)
🚗Whilst Google’s extensive reputation was acknowledged, it was held not to extend to the provision of ridesharing, taxi, passenger and carpooling services.
🚗Google’s reputation in Google Maps was not likely to lead to consumer confusion in respect of use of the name KOOGLE for a rideshare service.

Use of Koogle not contrary to law (section 42)
🚗Google was not able to establish that use of the KOOGLE trade mark would amount to misleading or deceptive conduct or a false and misleading statement under the Australian Consumer Law, or constitute passing off.
🚗Further, there was insufficient evidence to establish that use of the KOOGLE trade mark would be likely to infringe registration of GOOGLE as a well-known mark.

No Bad Faith (section 62A)
🚗Mere awareness of a well-known trade mark did not constitute bad faith.
Evidence as to the reasons for selecting the name KOOGLE were provided by the Applicant which did not indicate any intention to associate the name KOOGLE with Google’s trade marks.

Our full case summary can be found at: https://lnkd.in/gTbtNj98

08/12/2023

TM Opposition Case: BENZINA ZERO SPORT Zero Motorcycles Inc v Benzina Zero Pty Ltd [2023] ATMO 177 (2 November 2023) A well-reasoned TM decision and great…

01/06/2023

Thanks to all the fantastic friends and colleagues I was lucky enough to spend time with in Singapore (and apologies to those I missed). Awesome to get some international perspectives and meet lots of interesting new people. Please keep in touch!

01/06/2023

📢 Exciting News! I've been quoted in a recent Coin Telegraph article on copyright protection and AI! 📰✨ I'm thrilled to share that I've been featured in a…