In the recent ATMO decision Linecrest Pty Ltd v Cobannah HJoldings Pty Ltd as trustee for the Lollymania Trust [2013] ATMO 2 (9 January 2013), the owner of BIG FOOT lollipops successfully opposed the registration of BIG HAND lollipops.
The Opponent owned the trade mark TASTY TREATS BIG FOOT (logo) below in respect of lollipops and confectionery. The Hearing Officer stated that the words ‘tasty treats’ are relatively small in comparison to the dominant element ‘big foot’. 
The Applicant sought registration for the word mark BIG HAND in respect of lollipops and confectionery.
Material on the public record demonstrated that the goods on which the trade marks are used were more-or-less the same – that is, lollipops with soda powder/sherbet for dipping. Each package contained six (6) lollipops (and dipping packets) either in the shape of feet or hands.
In assessing whether concurrent use of the trade marks would likely deceive or cause confusion for consumers, the Hearing Officer considered the ‘fair and normal’ or notional use of the plain, unadorned BIG HAND trade mark. The Hearing Officer acknowledged that what might be considered ‘fair and normal’ use may change considerably when evidence is adduced of the actual or intended use of the trade mark. The Delegate then concluded that notional use of BIG HAND extended to include the representation of the hand device as shown on the packaging since the device did not substantially affect the identity of the mark.
The Applicant argued that the Opponent’s registered mark had a secondary meaning, namely the ape-like Bigfoot (or Sasquatch) of North American lore. However, the Hearing Officer reasoned that with ‘big foot’ being descriptive of the goods, as well as the juxtaposition of the word ‘foot’ underneath ‘big’, it was unlikely for consumers to only think of Sasquatch when remembering the Opponent’s trade mark.
On the other hand (pun intended), ‘big hand’ is similarly descriptive of the goods and on the packaging the term has a juxtaposition comparable to the ‘big foot’ get-up. In the circumstances, the Hearing Officer concluded that the Applicant coined the trade mark with the Opponent’s trade mark in mind and that actual use of the mark is imitative. Therefore, the mark is likely to deceive or confuse and the registration should be refused.
Lessons learned
On first impression, it seems here that the Hearing Officer may have granted the Opponent a lollipop monopoly (a lolliopoly?) in BIG [insert body part here]. Could this registration now successfully prevent registration for BIG NOSE, BIG EAR, BIG EYE and BIG BUM confectioneries? Such may be the case if the Opponent gains a substantial reputation in ‘big foot’ lollipops and future oppositions were decided based on section 60 (reputation) grounds.
The decision demonstrates the importance of packaging design and use of a house trade mark when an earlier-priority owner has obtained a registration in respect of a somewhat descriptive mark.
By Ward Olivete