Australian Trade Marks Law Blog

I thought cats were colour blind

NICHOLAS WESTON - AUSTRALIA — Thu, 01 Jul 2010 17:19:10 +1100

In Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 the Federal Court has confirmed that Mars has the exclusive right to use the colour “Whiskas Purple” as a trade mark in relation to its cat food products. With 220 registered colour marks now on the Australian Register, colour trade marks continue to gain popularity. Yet this case exemplifies the importance of deliberately choosing a particular colour within an extensive and calculated branding strategy in order for such marks to be considered sufficiently distinctive. The more distinctive the trade mark, the less challenging it is to register and the more it adds to the goodwill of a business, observes Nicholas Weston, the commercial IP law firm behind the Australian Trade Marks Law Blog, citing its favourite commercial case involving cats: Whiteman Smith Motor Co Ltd v Chaplin (1934) 2 KB 35 at pp 42, 49, where the types of goodwill were zoologically classified into cats, dogs, rats and rabbits, stating:

“The cat prefers the old home to the person who keeps it, and stays in the old home although the person who has kept the home leaves, and so it represents the customer who goes to the old shop whoever keeps it, and provides the local goodwill. The faithful dog is attached to the person rather than to the place; he will follow the outgoing owner if he does not go too far. The rat has no attachments, and is purely casual. The rabbit is attached by mere propinquity. He comes because he happens to live close by and it would be trouble to go elsewhere.”

The categories characterise the goodwill of a business in composite, partly referable to its locality, partly to the way in which it is conducted and the personality of those who conduct it, and partly to the likelihood of competition, many consumers being no doubt actuated by mixed motives in conferring their custom. Human consumers, that is, not cats. A cat cannot be made to do anything. No shade of purple will encourage a cat to shave, for example, for the reason that they already prefer whiskers.

History

In April 2000, Mars Australia Ltd (Mars) commenced using the “Whiskas purple” colour mark in Australia. Mars explained that the colour was created for the Mars Group in Europe “from scratch” by blending a strong streak of magenta with a dash of cyan, described as CMYK: cyan 40%, magenta 100% (as shown on the endorsement of Trade Mark No. 932937).

In November 2002 Mars applied to register the colour “Whiskas purple” as a trade mark. The application was accepted, but then successfully opposed by Societe des Produits Nestle SA (Nestle). The Delegate of the Registrar of Trade Marks hearing the opposition found that the “Whiskas Purple” mark did not distinguish Mars’ goods from those of other traders. The Delegate also considered that the ground of opposition under section 62(b) of the Trade Marks Act 1995 (Cth) had been made out because Mars had failed to adequately disclose to the initial Examiner that purple was being used by other brands of cat food – “the acceptance can only have been on the strength of the picture painted, no doubt innocently, but none the less inaccurately”.

Mars appealed the decision of the Delegate to the Federal Court.

The Federal Court Decision

The Hearing in this matter ran for nine days earlier this year before Nestle withdrew its opposition to registration of the “Whiskas purple” trade mark application.

By the time the case was decided by Justice Bennett, the Parties had settled and Nestle remains free to use purple on the packaging of its Purina-branded cat food. But before granting the consent orders proposed by the parties (as Australian Judges do not simply 'rubber stamp' proposed consent orders) Justice Bennett had to determine whether “Whiskas purple” should be registered as a trade mark. The main issue was, therefore, whether the Examiner at first instance had accepted the trade mark application on the basis of false evidence.

The decision by Justice Bennett outlines that section 62 (b) requires a causal connection between the suggested false statement and the acceptance of the application. Justice Bennett goes on to find that although the evidence provided by Mars may have been false in a material particular, it cannot be concluded that that the application was accepted on the basis of the false representations made by Mars through its declarant.

Justice Bennett also makes some observations in relation to the inherent distinctiveness of “Whiskas purple” trade mark. Most significantly, Justice Bennett points out that Mars “adopted an entirely new colour as a trade mark and promoted it heavily from the outset with…the clear intention of giving the colour a trade mark significance” and that the evidence supports the contention that “Whiskas purple” did function as a badge of origin by which consumers identified Mars’ goods in contrast to the goods of other traders.

So What?

This case demonstrates the value of getting your trade marks attorneys involved with your branding people early in the brand development process. Too many clients front their trade marks attorneys for the first time only after their application has been refused and their mark rolled out. This case should give them cause to, er, paws to check they are not being a copy-cat.

A non-traditional mark, such as a colour mark, may be registrable provided the trade mark significance of the mark is made clear. The potential that colour marks can play in a company's overall branding strategy should not be underestimated, but substantial time and money will need to be invested from the outset in a strategy aimed to prove that the colour is distinctive, making them better suited to the big players on the block.

.co Top Level Domain Name Sunrise Period Ends 10 June, 2010

NICHOLAS WESTON - AUSTRALIA — Sat, 05 Jun 2010 20:26:33 +1100

Jay Hines, a partner at US intellectual property attorneys Cantor Colburn LLP, has flagged a looming deadline. Jay writes:

"Colombia recently liberalized the administration of the .co country code domain name to open it up globally and streamline the registration process. Trademark owners with an interest in obtaining “domain.co” domain names that correspond to registered marks may now do so during a sunrise launch that ends on June 10, 2010. Any trademark that was registered in any country prior to July 30, 2008 is eligible to be registered in advance of the opening of general availability on July 20, 2010.

We are not at all certain how popular the .co top level domain will be under this new extension. The attraction of course is due to the fact that .Co is the abbreviation for “Company.” Whether or not you are interested in using a .co domain name, taking advantage of the sunrise period may prevent problems with third parties, perhaps from other countries, registering .co domain names identical to your registered trademarks once this category is opened up globally later this summer.

The cost for an application plus a one year annual fee is US$375 per domain name, including our fee, the application fee and a one year annual fee. In the event that two parties apply for the identical domain name during the sunrise period, you will have the choice of withdrawing the application or participating in an auction. If you withdraw at that point, you will receive a refund of US$265.

Please contact us (email Jay at Cantor Colburn, LLP) immediately if you are interested in our assistance with participating in the sunrise period."

Jay Hines

Lion mauled by High Court of Australia

NICHOLAS WESTON - AUSTRALIA — Sat, 29 May 2010 08:55:19 +1100

An Australian brewing giant has been forced to change the name of an entire beer range after losing a trade mark infringement case in the High Court of Australia brought by a US wine giant. Mmmm, beer. Reminds me of that famous exchange between the then High Court judges and counsel during argument in Joslyn v Berryman (2003) 214 CLR 552; [2003] HCA 34:

CALLINAN J: Mr Jackson, it seems to me that clearly the people at the party, including Ms Joslyn and Mr Berryman, went out with the intention of getting drunk.

MR D F JACKSON QC: It would be a big night, your Honour, big night.

CALLINAN J: With the intention of getting drunk and they fulfilled that intention.

MR JACKSON: Well, your Honour, young people sometimes——

KIRBY J: I just think “drunk” is a label and I am a little worried about—it is not necessary to put that label. It is just that they were sufficiently affected by alcohol to affect their capacity to drive.

MR JACKSON: Yes.

KIRBY J: “A drunk” has all sorts of baggage with it.

HAYNE J: Perhaps “hammered” is the more modern expression, Mr Jackson, or “well and truly hammered”.

MR JACKSON: I am indebted to your Honour.

KIRBY J: I do not know any of these expressions.

McHUGH J: No, no. Justice Hayne must live a very different life to the sort of life we lead.

KIRBY J: I have never heard that word “hammered” before, never. Not before this very minute.

Anyhoo, I digress (and Justices Kirby, McHugh and Callinan have since retired). Back in 2008, US wine company E. & J. Gallo Winery (Gallo) brought Australian brewer Lion Nathan National Foods (Lion Nathan) before the Federal Court of Australia, claiming that Lion Nathan's "Barefoot Radler" brand of beer infringed Gallo Winery's "barefoot" trademark, used by Gallo on a range of budget wines. The Australian Trade Marks Law Blog reported that first instance decision HERE.

When the matter came before the Full Court, it was uncontroversially held that the offer for sale and selling, by an Australian retailer, of the bottles of wine which bore the registered trade mark constituted "use" of the trade mark in Australia within the meaning of s 7(4) of the Trade Marks Act 1995 (Cth) but on the question of whether this use was by the registered owner as a consequence of use by the retailer as authorised user found against Gallo. (The Full Court also held that beer and wine are ‘goods of the same description’, overturning the first instance finding and suggesting, like Justice Kirby, that Their Honours need to get out a bit more, but that issue was not agitated before the High Court). The Australian Trade Marks Law Blog reported the Full Court decision HERE.

So the principal issue that did come before the High Court in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 (19 May 2010) turned on whether that use was use by the registered owner in circumstances where 60 cases of the branded wine had been sold to a German company with the manufacturer having no intention or awareness of its on-sale to Australia. The High Court found that the registered owner’s ‘intention’ was beside the point and held [using the sama paras] that:

42. “Whilst that definition (section 17) contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth) that a trade mark indicate "a connexion in the course of trade" between the goods and the owner, the requirement that a trade mark "distinguish" goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of "goods to which the mark is applied”. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. There is nothing in the relevant Explanatory Memorandum to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark.

43. “In Coca-Cola Co v All-Fect Distributors Ltd[19] a Full Court of the Federal Court of Australia said:

"Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of 'trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else."

"That statement should be approved.”

51. “The capacity of a trade mark to distinguish a registered owner's goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the course of trade, is a use for the purposes of the Trade Marks Act. A registered owner who has registered a trade mark under the provisions of the Trade Marks Act can be taken, in general terms, to have an intention to use that trade mark on goods in Australia. It is a commonplace of contemporary international trade that prior to consumption goods may be in the course of trade across national boundaries.”

65. “A commercial quantity of wine, some 144 bottles, was imported and offered for sale under the registered trade mark by Beach Avenue during the statutory period. Some 41 sales during that time were proven by reference to invoices and tax paid. There was no suggestion in the evidence that the offering for sale and selling either overseas or in Australia was for any purpose other than making profit and establishing goodwill in the registered trade mark. It was not contended that the use was fictitious or colourable. In all the circumstances the use was genuine and sufficient to establish use in good faith for the purposes of Lion Nathan's application for removal.”

69. “… The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).”

So what?

Following the result, a Lion Nathan spokesman released a statement that said: “We are disappointed by today’s High Court ruling, which represents a substantial change to Australian trade mark law.”

It does not. It correctly recognises that an overseas owner can maintain registration of its Australian trade marks and protect them from ‘non-use’ applications even where they hardly use the relevant trade mark in Australia or are unaware the trade mark was being used in Australia. Overseas owners can probably run their Australian trade marks portfolios, even while 'hammered', and let the parallel importers handle distribution. Nothing new in that.

The decision also provides useful guidance on when to register a ‘device’ or logo separately from a word mark, and underscores the point that, when selecting a mark, a search must cast its net widely to scrutinise related classes, trade channels and potential uses.

Nick Weston

High Court sits to determine standing

NICHOLAS WESTON - AUSTRALIA — Tue, 27 Apr 2010 15:13:33 +1100

In one of the few recently decided High Court cases dealing with trade mark issues, a unanimous decision was handed down in Health World Limited v Shin-Sun Australia Pty Ltd [2010] HCA 13 allowing an appeal relating to the meaning of ‘aggrieved’ under the Trade Marks Act 1995 (Cth) (the Act). The High Court found that Health World had the requisite standing to challenge Shin-Sun’s HEALTHPLUS trade mark and remitted the matter to the Full Federal Court for determination of the remaining issues.

Background

Health World Limited (Health World) has been manufacturing and supplying probiotic capsules under the name INNER HEALTH PLUS since 2000 and is the registered proprietor of the name INNER HEALTH PLUS (the Health World trade mark).

Since 2001 Shin-Sun Australia Pty Ltd (Shin-Sun) has manufactured and sold health supplements under the name HEALTH PLUS. Following a failed opposition by Health World Shin-Sun registered the trade mark HEALTH PLUS with IP Australia (the Shin-Sun trade mark).

At First Instance

Health World commenced proceedings in the Federal Court to have the Shin-Sun trade mark removed seeking cancellation under Section 88(1) of the Act, as well as non-use under Section 92 of the Act, both of which have the standing requirement that the applicant be an ‘aggrieved person’ (there was the additional requirement under Section 92 of the Act as it stood prior to the commencement of the Trade Marks Amendment Act 2006 (Cth) that the applicant for non-use be a ‘person aggrieved’)

At the same time, Shin-Sun brought their own non-use application under Section 92 of the Act against Health World.

The Trial Judge dismissed all three applications. A detailed discussion on this first instance case by the Australian Trade Mark Law Blog can be accessed HERE.

The Full Federal Court Decision

Health World appealed the Trial Judge’s finding by contesting that it lacked standing both under Section 88(1) and Section 92(1) of the Act.

The Full Federal Court dismissed the appeal and held that a person is aggrieved ‘if there is a reasonable possibility of the applicant being appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified’ (Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 (the Ritz Hotel case).

In arriving at this decision the Full Court was bound by an earlier decision in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104(the Kraft case) where it was held that the Ritz Hotel case provides an exhaustive test for determining whether an applicant is ‘aggrieved’.

Health World successfully sought special leave to appeal to the High Court on the issue of standing to seek revocation of a trade mark.

The High Court Case

French CJ, Gummow, Heydon and Bell JJ commenced their joint judgement outlining that the meaning of ‘aggrieved’ varies depending on which statute it appears. The Justices emphasised that the Register of Trade Marks must have ‘integrity’ and should be maintained as ‘an accurate record of marks’. However, this purpose must be balanced with the need to prevent ‘the security of the Register from being eroded by applications for rectification or removal by busybodies’. In this light the Court found that the authorities favour a liberal construction of the word ‘aggrieved’.

Overturning the earlier decision the High Court found that the Full Federal Court should not have followed its predecessor in the Kraft case because that case was ‘plainly wrong’ and in fact, no exhaustive test had been set; meaning the Kraft case should be overruled.

Turning to the Ritz case, the High Court held that McLelland J in that case had not been offering a complete account of what the legislation meant and was not ‘marking the outer boundary of the words aggrieved person’ but rather he had been deciding ‘the particular controversy before him’.

The High Court preferred the finding in Daiquiri Rum [1969] RPC 600 where Lord Pearce stipulates no requirement that the applicant for revocation desires or intends to use or could use the mark rather ‘all that mattered was that they were rivals in relation to the goods to which the mark applied’. In the present case the parties were certainly rivals ‘who have lost no opportunity to attack each other’s attempts to register trade marks both before the Registrar and in four sets of court proceedings which have so far been heard by 10 judges’.

So What?

The High Court case clarifies the standing requirement of ‘aggrieved’ which today remains relevant with respect to applicants seeking revocation under Section 88 of the Act. As to non-use proceedings under Section 92 of the Act the standing requirement has already been removed.

The matter has now been referred back to the Full Federal Court and based on the Trial Judge’s decision Shin-Sun’s mark will be removed since it did not intend to use the mark and had allowed it to become deceptive or confusing.

We wonder if Shin-Sun is kicking itself for not similarly appealing the decision at first instance where its application on precisely the same standing issue was rejected.

Lea Lewin

She will not be Apple's

NICHOLAS WESTON - AUSTRALIA — Fri, 19 Mar 2010 16:46:04 +1100

Australian idiom for “it will be alright” is “she’ll be apples” but recently, Apple Inc found that she won’t. A recent decision by a Delegate of the Registrar of Trade Marks (Apple Inc v Wholesale Central Pty Ltd [2010] ATMO 7) has found against Apple Inc., and in favour of a small company dealing in digital device accessories to continue to use their ‘DOPi’ brand. On the face of it the decision appears fairly obvious considering the differences in the marks in question (‘iPOD’ vs ‘DOPi’(stylised)) but the case does emphasise Apple’s litigation strategy to box-on regardless of the merits of a case.

Wholesale Central Pty Ltd filed a trade mark application for ‘DOPi’ (stylised) in Class 9 on 24 February 2007 (Australian trade mark Application No. 1162904) which was accepted by an Examiner and then opposed by Apple Inc on 21 September 2007. Although all grounds of opposition were claimed in the Notice of Opposition, only the grounds under Sections 44 and 60 of the Trade Marks Act 1995 were pursued at the Hearing.

Apple Inc sought to rely on seven previously registered trade marks in support of their opposition. However, the Delegate noted that only two of these, claiming the word iPOD alone, were relevant since the others simply covered the word iPOD in combination with other elements and were thus “effectively redundant”. Specifically, Apple had to succeed through reliance on its two registrations of the iPOD mark and if not, the other registrations would not assist.

Counsel for Apple made submissions that the particular colouring and orientation of the letter “i” in the Applicant’s mark gave the letter prominence which would result in the consumer’s attention immediately being deflected to that part of the mark thus bringing to mind the Opponent and its family of “i” products. Counsel further argued that the use of the “i” showed “bad faith” on behalf of the Applicant and supported Apple’s case for opposition.

The Delegate did not agree with Counsel’s submissions. In his decision, the Delegate pointed out that there existed a large number of “iMarks” already on the Register, many of which are owned separately by third party registrants. Moreover, the Delegate pointed to the fact that numerous “iMarks” were, in fact, included in the Opponent’s own publications. The Delegate also acknowledged that no instances of confusion had been demonstrated and held that in cases such as this where a mark has “notorious familiarity” the risk of deception or confusion is decreased. It was these factors rather than the fact that the marks look so obviously different that the Delegate based his decision. Had Wholesale Central sought to register just the word “PODi” (rather than the stylised version in question) it would have been interesting to note the differences in the decision.

This case may encourage brand owners on the other side of a legal battle with Apple Inc to stand their ground, but is unlikely to curb the tech-giant’s aggressive approach to intellectual property protection. In this case, it appears their absurd suggestion is that the letter “i” is brought to you by Apple.

Lea Lewin

Trade Mark Use: We need a more balanced solution

NICHOLAS WESTON - AUSTRALIA — Tue, 17 Nov 2009 15:32:20 +1100

The 12 November 2009 decision in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299 focuses almost exclusively on whether the defendant had used the plaintiff’s trade mark ‘as a trade mark’. Alcon has a registered trade mark ‘BSS’ for ophthalmic irrigation products and, not surprisingly, objected to Bausch & Lomb (BL) using the expression ‘BSS’ on its labels for its products. The case revolved primarily around the issues of whether BL had used the trade mark as a trade mark and related issues as to whether the trade mark should remain registered, primarily on the grounds that it was not distinctive.

Whether BL was using the letters BSS as a trade mark required a detailed analysis of the context of that use. Set out below are the findings of the Judge.

155. The following factors are relevant to the present question:

(a) The letters “BSS” appear in block white letters in the top section of the label with the royal blue background. The trade mark “AQSIA™” appears in the same part of that label. The letters used to form “AQSIA™” are larger than those used to form “BSS”. This part of the label is intended to be separate from and more prominent than the rest of the label. The impression created by the positioning of “AQSIA” and “BSS” is that this part of the label is dealing with branding of the product;

(b) The word “sterile” appears immediately underneath the blue backgrounded top part of the label. It is a description, at least to some extent, of the contents of the bottle.

(d) There is no other indication on the bottle or on the plastic sachet as to the contents of the bottle;

(e) The sachets are supplied in the cardboard box described at [5] above. That box is a dispenser. Importantly, in a number of places, the words “balanced salt solution” appear on the box but the letters “BSS” do not;

(f) The trade mark “AQSIA™” and the corporate name “BAUSCH & LOMB” also appear prominently on the box;

(g) The Product Information Leaflet in the box does not mention “BSS” but does refer to “balanced salt solution”.

(h) The letters “BSS” have brand significance in the relevant trade in Australia. They are known to be the applicant’s trade mark. The applicant has a reputation in the product identified by reference to the mark (Alcon BSS).

In addition, Foster J found that BSS was not generally used within the relevant trade in Australia as descriptive of the term ‘balanced salt solution’.

This article focuses on point (h) above and its relevance or more to the point its irrelevance. Right up to point (g), the paragraph of the judgment reads well. It deals exclusively with BL’s conduct and, in particular, the manner in which it has used the sign BSS. The inquiry is directed entirely towards whether BL’s use is use designed to describe its product generally or to distinguish its goods from other goods, that is, to suggest that the letters BSS say to consumers, ‘when you see the letters ‘BSS’, you are seeing our goods and nobody else’s goods’.

Once we get to point ‘(h)’, a problem arises because the focus now shifts to what the applicant has done with its trade mark and the reputation arising from that use. Yet that is not relevant to whether the defendant has used the sign in question to distinguish its goods from other goods. Trade mark use requires an analysis of the nature of the defendant’s conduct and, in particular, whether it has used a particular sign so as to distinguish its goods from other goods. The question at this point is not whether consumers are likely to be deceived or confused by the defendant’s conduct. In fact, for the purposes of s120(1), the plaintiff does not have to prove such deception or confusion. Use as a trade mark of a deceptively similar trade mark is enough to establish infringement. Similarity between trade marks is a very different matter from considering whether the defendant’s use of its trade mark has or is likely to deceive or cause confusion.

To be fair to Foster J, the plaintiff’s reputation has been considered relevant to the question of infringement in previous cases. The most recent case where this occurred was Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606. However, in that case, the court considered that the plaintiff’s reputation for its trade mark was relevant to the question of whether the two trade marks were deceptively similar, not whether the defendant had used a particular trade mark as a trade mark.Even that approach is somewhat dubious and the case itself acknowledged that such an approach can only be taken in limited circumstances.

To now begin to introduce the relevance of the plaintiff’s reputation into the inquiry about trade mark use by the defendant invites a conflation of the two issues of use of a sign by the defendant as a trade mark and the similarity between that sign and the plaintiff’s trade mark. It was this conflation that the Full Federal Court warned against in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721. They are separate inquiries and the reputation of the plaintiff is irrelevant to the question of whether or not the defendant has used a particular sign as a trade mark.

Of course, the conclusion that use as a trade mark had occurred in the case relied on other factors and, as noted above, points (a) to (g) are relevant and compelling. But if relying on (h) becomes a habit, we might as well abandon our present trade mark infringement rules and simply introduce a general test of whether consumers are deceived or confused or are likely to be deceived or confused as a consequence of the defendant’s conduct.

Professor Mark Davison

Cannot Understand Non-Latin Domain Name Endings?

NICHOLAS WESTON - AUSTRALIA — Tue, 17 Nov 2009 14:39:13 +1100

From 16 November 2009, the Internet Corporation for Assigned Names and Numbers (ICANN) will take the first step in a long process to introduce the option of ending domain names in non-Latin characters with an aim to improving access for 800 million-plus Internet users in non-Latin script using countries. However, no-one can register domain names with the new endings yet, so keep your hairy shirt on. If you cannot understand non-Latin domain name endings, this article may help, but finding websites featuring Thai ladyboys is about to get a whole lot more difficult.

Under the new system, Country Code Top Level Domains (ccTLDs) such as .au, and generic Top Level Domains (gTLDs) such as .com, can obtain new endings known as ‘Internationalised Domain Names’ (IDNs) in languages such as Chinese, Hebrew or Cyrillic.

On that date, countries with a non-Latin native script may apply to ICANN for a ‘FASTTRACK’ IDN ccTLD so that the letters to the right of the dot can reflect that country’s name in the script of its official language. ICANN will evaluate these applications on a number of criteria. If ICANN’s filing and technical requirements are met by the application, including government and community support and country stability considerations, the relevant applicant nation will be fast tracked so that they can issue new IDN ccTLD registrations in the second quarter of 2010.

Following release of the IDNs, the country registries will separately determine their requirements under the new IDNs. So each one will have its own idea of the pricing of applications, of whether existing domain name holders of Latin-character domain names should have first dibs over the corresponding IDN and whether there will be sunrise periods to allow brand owners to register their brands with IDN ccTLDs first.

So what?

Registration requirements are likely to differ from country to country so you will need to monitor any potential IDN ccTLDs of interest to you. There are bound to be more scam emails concerning the new IDNs. You should check too that your monitoring service will pick up the new IDNs.

International companies and those doing cross-borders business will need to revisit their IP and domain name strategies to take IDNs into account. If a local language is important to you or a client, you should consider the filings that should be made once the system becomes operative.

Oh, and you might need to improve your Thai.

Nick Weston (Nick Weston is a Member of the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center's List of Arbitrators and Mediators and also the Center's Domain Name Panel).

Apple picks Woolworths in trade marks dispute

NICHOLAS WESTON - AUSTRALIA — Tue, 06 Oct 2009 16:01:22 +1100

Apple is opposing registration as a trade mark the new logo of Australian supermarket chain Woolworths, claiming that the stylised green W is too similar to its own famous apple logo. Woolworths’ applications were submitted in August 2008, and seek to include a wide range of electrical goods and technology.

Woolworths is seeking a blanket trade mark registration of the logo from IP Australia and, as the attached copy of the applications show, they are seeking to cover goods ranging from ‘manure’ in class 1 to ‘cream’ in class 29 (perhaps for rhubarb), to ‘flexible pipes, not of metal’ in class 17 to ‘entertainment’ in class 41 (hopefully, not in the same act). Apple submits that if the logo was used on electrical goods, specifically computers or music devices, it would be deceptively similar to Apple products and cause confusion among consumers. But apparently not confusing for children, (see the last page of the report) as the version of the stylised W logo with the strapline 'fresh food kids' is now registered.

Woolworths, which has already sells, inter alia, credit cards and mobile phones, reportedly said it could not rule out going into own brand electronic equipment. (Writer: Me either, but I had been drinking for 7 hours straight and was squinting through the bottom of a beer glass at the time, which was also about the time I began to notice a resemblance between the logos.)

Apple is known for its enthusiastic approach to protecting its trade marks. It was involved in a long-running legal dispute with The Beatles’ record company over the use of the Apple name; it had a crack at New York City’s GreeNYC campaign, and picked a fight with the Victoria School of Business and Technology in Canada.

The Australian supermarket Woolworths has no business connection to US Woolworths group or the failed UK retail chain of the same name. Except the name of course. But that another story. So is this: Former Miss Universe, Jennifer Hawkins, is having a trade mark dispute over her ‘Cozi by Jennifer Hawkins’ label which is being opposed by the owner of swimwear brand Caussie. (Picture: Jennifer Hawkins sans makeup, relaxing at home).

According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, neither opponents stand much chance of successfully resisting registration of the Woolworths stylised W device or the mark ‘Cozi by Jennifer Hawkins’. Both opponents are likely to fail to establish on the balance of probabilities that a prospective purchaser may still be ‘caused to wonder’ whether theirs and the marks they are opposing, though different, are the property of the same entity. According to Nicholas Weston, Apple’s best hopes for registration to be refused lay with section 44 of the Trade Marks Act 1995 (Cth) (deceptive similarity of the mark in respect of similar services or closely related goods) and section 60 (trade mark deceptively similar to a mark with a reputation in Australia in respect of both related and unrelated goods).

About Nicholas Weston

Founded in 2005, Nicholas Weston is ranked two years running (2008 and 2009) by Managing Intellectual Property Magazine’s World Survey for 'Trade Mark Prosecution' and 'Trade Mark Contentious'. When its principal is not drinking heavily, the firm claims practical implementation of thought leadership. Nicholas Weston serves the creative and technology sectors and sectors being transformed by technology.

For more information contact:

Nicholas Weston Lawyers & Trade Marks Attorneys

Ground Floor, 156 Collins Street, Melbourne Vic 3000 Australia

T: (+ 61) 1300 132 551

mail@nicholasweston.com

www.nicholasweston.com

Nicholas Weston - INTA tilts at new internationalised GTLDs and ccTLDs coming in 2010

NICHOLAS WESTON - AUSTRALIA — Mon, 07 Sep 2009 17:32:54 +1100

The Full Employment Act for Domain Name Practitioners, otherwise known as the new generic top-level domains (gTLDs) ‘internationalised domain names’ (IDN) program proposed by ICANN (the acronym obsessed, global domain name bureaucrats), could be active on the Internet by the end of 2010. Under this program, it is proposed that (in summary), generic, geographical and brand names can be registered to the right of the last dot (for example, .melbourne, .aboriginal, .christian and so on). These may conflict with existing gTLD’s and ccTLD’s and with trade marks in various jurisdictions. The critical path seems to be as follows:

Draft Applicant Guidebook (DAGv3) will be released by ICANN prior to the Seoul ICANN meeting in late October 2009.
DAGv4 (final version) likely to be published in December 2009.
First application cycle in February 2010
Validation period: 4 - 5 months
Sign off on applications by the Board of ICANN: > 7 months

According to Stephane Van Gelder, Co-Founder and General Manager of French domain name registrar INDOM, if the concurrent ccTLD IDN fast-track process is approved - as anticipated - in October at the Seoul meeting of the ICANN Board, those countries whom are ready can expect to launch their IDN ccTLD by mid 2010. Thus spake Kurt Pritz, President of Services at ICANN, in Sydney recently and Theresa Swinehart, ICANN’s Vice President of Global and Strategic Partnerships and Tina Dam, ICANN’s Senior Director of IDNs at the Asia Pacific TLD Association meeting in Beijing. More from Stephane here and here.

Not INTA it

This is notwithstanding the position of the International Trademark Association (INTA), as set out in two Board Resolutions, THAT any expansion of gTLDs "should not be introduced unless and until ICANN resolves the overarching issues of trademark protection, the potential for malicious conduct, Internet security and stability, and top-level domain demand and economic impact; AND THAT any expansion of the generic domain name space must not be unlimited, but must be responsible, deliberate and justified."

So what?

Before I continue, naturally my views are my own and not INTA’s (yep, member) or INTA’s ADR External Partnering Subcommittee (yep, member, but that committee had nothing to do with this or any other Resolutions that I can recall). However, it does make me wonder why I am a member of an organisation that actively agitates against (1) a pretty good idea from ICANN; and (2) the Full Employment Act for Domain Name Practitioners. Windmills are useful and guess what? INTA's campaign is Quixotic. Whether we like it or not, the IDN gTLDs and ccTLDs are coming next year.

"Just then they came in sight of thirty or forty windmills that rise from that plain. And no sooner did Don Quixote see them that he said to his squire, "Fortune is guiding our affairs better than we ourselves could have wished. Do you see over yonder, friend Sancho, thirty or forty hulking giants? I intend to do battle with them and slay them. With their spoils we shall begin to be rich for this is a righteous war and the removal of so foul a brood from off the face of the earth is a service God will bless."

"What giants?" asked Sancho Panza.

"Those you see over there," replied his master, "with their long arms. Some of them have arms well nigh two leagues in length."

"Take care, sir," cried Sancho. "Those over there are not giants but windmills. Those things that seem to be their arms are sails which, when they are whirled around by the wind, turn the millstone."

Nick Weston (and Miguel de Cervantes)

Nicholas Weston - Guylian sells chocolate sea shells, but Court not so sure

NICHOLAS WESTON - AUSTRALIA — Sat, 22 Aug 2009 23:15:18 +1100

In a recent decision handed down by the Federal Court, long time chocolate manufacturer, Chocolaterie Guylian N.V. (Guylian) has been unsuccessful in its attempt to register as a trade mark its seahorse-like shape praline chocolate: (Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009). Sundberg J., dismissed Guylian’s application, finding that the chocolate seahorse shape was not sufficiently inherently distinctive to the extent required by Section 41(3) of the Trade Marks Act 1995 (Cth) (the Act), and that the seahorse shape did not distinguish the designated goods as being Guylian’s to satisfy Section 41(5) of the Act.

A Brief Word on Shape Marks

Although previously registrable as 'devices', the Act introduced shape marks as a separate category of protectable marks in Australia. Section 17 defines a ‘trade mark’ as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ and a ‘sign’ in defined in Section 10 of the Act as including a ‘shape’.

There are a large number of registered shape marks on the Register but since the Federal Court decision in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 (the Phillips case) such marks have come under closer scrutiny. Shape marks that comprise the entire shape of an article have been harder to register without substantial evidence of use unless the shape is so unlikely that the public would not wonder why a trader would have adopted it in the first place.

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 (the Kenman case) the Full Federal Court departed from other cases by allowing registration of the Kenman Kandy ‘millennium bug’ confectionary on the basis that its stylised, six-legged 'creature' was an invented shape. The Kenman case appeared to slightly relax the path to registration of shape marks. But the more recent cases have proven the difficulties associated with registering these marks, particularly showing use of the shape ‘as a trade mark’.

Background to the Guylian decision

Guylian, the Belgian manufacturer of boxed chocolates distributes its chocolates to 132 countries. Particularly well-known, at least to those consuming large amounts of chocolates at dinner parties in 1985, is its sea-shell range which comprise marine life shapes, filled with a praline hazelnut centre; yum.

Guylian obtained international registration as a trade mark pursuant to the Madrid Protocol for one member of its sea shell range: the seahorse. On 16 October 2002, Guylian sought to extend protection of its seahorse as a three dimensional shape mark in Australia in respect of goods in class 30, to cover pralines and chocolates. Based on the international registration in Benelux (as its 'home' registration), the priority date of the Australian application was 16 April 2002.

On 31 May 2007, after a Hearing, a delegate of the Registrar of Trade Marks refused registration of the seahorse shape first on the basis that the seahorse shape ‘is not prima facie capable of distinguishing’ under Section 41(3) of the Act and, secondly, for the reason that the evidence of Guylian’s use of an image of the seahorse shape on its packaging did not demonstrate that the shape had been used as a trade mark in order to satisfy the requirements under Section 41(5).

The present case related to an appeal of the Registrar’s decision by Guylian to the Federal Court.

The Decision

The first substantive issue considered by Sundberg J., was whether the seahorse shape was inherently adapted to distinguish Guylian’s goods under Section 41(3) of the Act?

On this point, Guylian put forward the argument that its seahorse shape is a ‘fanciful stylised’ representation of a seahorse, which ‘departs radically from the shape of seahorses found in nature’. Guylian pointed to the position of the seahorse’s tail and its solid and chunky appearance as distinguishing features. Guylian further contended that the question of whether a shape, reminiscent of an animal, is sufficiently adapted to distinguish, must be determined by reference to any existing or likely renditions of such an animal in the marketplace.

Guylian went on to argue that there was no evidence that seahorse shapes were being used as at the priority date and the evidence of use of the shape or similar shapes in 2008 (adduced by the Registrar) should be given no weight at all, because the six years between the priority date and 2008 was too great and that the inferences made by the Registrar – namely, that other traders as at April 2002 were using, or might wish to use, the shape or a similar shape – could not reliably be drawn. Guylian regarded these later examples as copies.

By way of contrast, the Registrar contended that unlike the ‘bug’ in the Kenman case, the seahorse shape is not concocted but is clearly a representation of a real seahorse. The Registrar argued that the seahorse shape clearly possesses an ordinary signification which others traders might want to use.

Justice Sundberg found the ultimate question to be tried was ‘whether there is a likelihood that other traders, acting with proper motives, will think of the shape and wish to use the same shape or one substantially identical or deceptively similar’. His Honour noted that seashell shaped chocolates had been sold in Australia since at least 1990 and as such ‘it seems to me reasonable to expect that, as at the priority date, other traders might wish to make chocolates in the shape of a seahorse, as well as other marine creatures’.

The second substantive issue considered by the Federal court, was does or will the seahorse shape distinguish Guylian’s goods – Section 41(5) of the Act?

Sundberg J., expressed the approach to Section 41(5) as a ‘balancing exercise’ involving two specific matters (1) the extent to which the mark is inherently adapted to distinguish and (2) the use, or intended use, of the mark by Guylian.

Guylian made submissions based on extensive and continuous sales, advertising and promotion since 1980 of its seashell range. They also sought to rely on survey evidence which showed just over 40% of survey respondents recognised the seahorse shape as belonging to Guylian.

The crux of the Registrar’s submission was that Guylian had failed to demonstrate use of the seahorse shape as a trade mark. The Registrar argued that the seahorse shape had not been used as a badge of origin but rather ‘simply one of the chocolate shapes out of a number of sea shell/marine shapes that Guylian sells and markets as one collection’.

The Court found against Guylian, His Honour making the following points:

- the image of the seahorse shape is used on Guylian’s packaging to attract customers, alongside many other sea shell shapes;

- the ‘Guylian’ trade mark and the stylised engraved ‘G’ logo appearing on the packaging dilutes the trade mark significance of the seahorse shape;

- the survey evidence shows a significant proportion of respondents associated Guylian with the seahorse shape. However, this was not sufficient to show that the association was referable to Guylian having used the shape as a trade mark because ‘the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods’; and

- His Honour agreed with the Registrar that the survey results themselves did not favour protection since almost half of the respondents were unable to identify the shape with any particular brand or manufacturer.

So What?

According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, while the decision might be surprising to some, and there is nothing much new in it, it does highlight the complexities and drawbacks associated with relying on survey evidence to address the issues raised under Section 41 of the Act. Survey questions need to focus beyond just asking whether a consumer recognises a shape as a product of a particular manufacturer and needs to ask whether they would rely on that shape alone as an indication of trade origin. Also, whilst the requirements for registration of shape marks are the same as for other types of marks, this decision emphasises the difference between simply using a shape and actually using it as a trade mark.

To my mind, Guylian were the pioneers of the lovely “Perles d’Ocean” chocolate range but their trade marks department appears to be a bit cute by saying, in effect: 'oh, we did not rely on those 'Perles d'Ocean' advertising campaigns to become well known, just the shape of that delicious seahorse right there'. Regardless, the writer will remain loyal.

Lea Lewin

Nicholas Weston acts for Japan Karate Association in Fight over Trade Mark Rights with Japan Karate Association of Australia

NICHOLAS WESTON - AUSTRALIA — Tue, 04 Aug 2009 23:39:49 +1100

Bah! No trade marks decisions of significance have been handed down by the Federal or High Court in weeks, so I am resorting to a Federal Court case my firm acted in earlier this year that resulted in a non-confidential settlement entirely in our client’s favour. The settlement was deliberately not confidential so as to send a loud signal to other member organisations in the federation of Japan Karate Associations throughout the world not to help themselves to intellectual property belonging to head office in Japan.

In Japan Karate Association v. Japan Karate Association of Australia (JKA) Pty Ltd (Federal Court No. VID 1039 of 2008) Nicholas Weston Lawyers & Trade Marks Attorneys, the law firm behind the Australian Trade Marks Law Blog, acted for the Applicant, the Japan Karate Association (“JKA”). JKA was established in Japan in 1958 to promote the martial art of karate (“the JKA business”) and since about 1963 had conducted that business throughout the world by:

providing karate education, exams and training to pupils:
training, ranking and accrediting karate instructors;
sponsoring accredited instructors to travel overseas to teach and promote karate;
arranging and conducting karate tournaments and exhibitions;
producing and selling publications and videos/DVDs relating to karate;
producing and selling clothing and equipment for use in karate.

(“the JKA goods and services”).

JKA had also used the name NIHON KARATE KYOKAI or its English translation JAPAN KARATE ASSOCIATION and the acronym JKA in relation to the JKA business and the JKA goods and services since around 1963 and since at least 1958, used a “Sun and Moon” device (illustrated below) created by and for JKA in 1958 in relation to the JKA business and the JKA goods and services:

JKA also claimed copyright in the “Sun and Moon” device. Collectively, “the JKA marks” comprised the name JAPAN KARATE ASSOCIATION, the acronym JKA and the “Sun and Moon” device.

The World Federation

JKA had sent instructors to overseas countries to establish Japan Karate Association branches since about 1963. In order to regulate the growing number of member countries, JKA established a federation of Japan Karate Associations throughout the world, collectively known as the Japan Karate Association World Federation (“JKAWF”). Member countries are permitted to provide certain JKA goods and services under and by reference to the JKA marks, subject to the authority and control of Japan Karate Association. There are currently over 110 member countries of the JKAWF and on average each member country has 20 branches. Sometimes, members from around the world would buy goods from the JKA shop in Japan, then return to their home countries where they wore or on-sold the goods.

Use of the JKA marks in Australia

In Australia, the Japan Karate Association of Australia (JKA) Pty Ltd (“JKAA”) was established in or around 1972 when a karate instructor trained and accredited in Japan by JKA moved to OZ and formed JKAA with the approval and sanction of JKA in Japan. Even so, JKA claimed that it had directly and continually used the JKA trade marks in Australia in relation to the staging of international karate events in Australia in 1988 (2^nd World karate-Do Championships) and in 2006 (10^th World Karate-Do championships) and on clothing and equipment to which the JKA marks were applied by JKA, or its licensees, and re-sold in Australia by JKAA so that the marks had become well and widely and favourably known and were associated with the JKA and no other person or entity.

Registration of trade marks in Australia by JKAA

A Trade Marks Search revealed that JKAA appeared on the Australian Register of Trade Marks as the proprietor of Australian Trade Mark Registration No. 1020590 for the “Sun and Moon” device, 1020591 for JKA; J.K.A. series, 1020592 for JAPAN KARATE ASSOCIATION; JAPAN KARATE ASSOCIATION OF AUSTRALIA series and 1054061 for JKAA; J.K.A.A. series (collectively, “the JKAA trade marks”).

The claims by which the JKA sought rectification of the Trade Marks Register

The matter settled before the JKA claims were tested by a Court. For them wot is still interested (hang in there, cobbers, it gets worse), the JKA alleged that the JKAA trade marks were liable to be cancelled, amended or removed from the Register of Trade Marks pursuant to section 88 of the Trade Marks Act 1995 (Cth) (“the Trade Marks Act”) on a number of grounds:

Standing: JKA was aggrieved by the maintenance of the JKAA trade marks on the Register of Trade Marks because it claimed:

1. JKAA was not the owner of the JKAA trade marks, JKA was;

2. JKA uses and intends to continue to use the JKA marks;

3. The representation of the “Sun and Moon” device that the JKAA had registered was an infringement of JKA’s copyright in that design.

Contrary to law: That the JKAA marks infringed JKA’s copyright in the “Sun and Moon” device, and that such use would constitute breach of sections 52 and 53 of the Trade Practices Act and common law passing off.

Ownership: It was alleged that JKAA was not the owner of the JKAA trade marks, pursuant to section 58 of the Trade Marks Act.

Deception and confusion: It was alleged by JKA that the JKAA trade marks were substantially identical with or deceptively similar to the JKA trade marks and, because of the reputation in Australia of the JKA marks, which was acquired before the priority dates of the JKAA trade marks, the use of the JKAA trade marks would be, and at all relevant times would have been, likely to deceive or cause confusion, pursuant to section 60 of the Trade Marks Act. Also, because of the circumstances applying at the time of filing this application, it was alleged that the use of the JKAA trade marks would be likely to deceive or cause confusion, pursuant to section 88(2)(c) of the Trade Marks Act.

No intention to use: JKA alleged that at the time of filing the applications for registration of the JKAA trade marks, JKAA did not intend to use, or authorise the use of, the JKAA trade marks in Australia, or to assign the JKAA trade marks to a body corporate for use by the body corporate in Australia in relation to the services specified in the applications, pursuant to section 59 of the Trade Marks Act.

False representation: JKA alleged that the Trade Marks Registrar had accepted the applications for the JKAA trade marks on the basis that JKAA had falsely represented that it was the owner of the JKAA trade marks in respect of the claimed class 41 services in Australia.

No intention to use in good faith: It was also alleged that the JKAA trade marks were liable to be removed from the Register of Trade Marks pursuant to section 92(4)(a) of the Trade Marks Act 1995 because on the days on which each of the applications for the registration of the JKAA trade marks were filed, JKAA had no intention in good faith to use or authorise the use of the JKAA trade marks in Australia, or to assign the JKAA trade marks to a body corporate for use by the body corporate in Australia, in relation to the claimed services in class 41 and JKAA had not used the JKAA trade marks in Australia or had not used the JKAA trade marks in good faith in Australia.

Result

Without any admission of liability, JKAA assigned the Trade Marks to JKA and paid JKA a sum of AUD$30,300 and undertook to JKA not to do any act, or to assist any person directly or indirectly to do any act, which would or might:

invalidate or put in dispute JKA’s title to the Trade Marks;
oppose any application for registration of the Trade Marks, or invalidate any registration of the Trade Marks in due course;
support an application to remove any of the Trade Marks as a registered trade mark;
cause any Registrar of Trade Marks to require a disclaimer of a monopoly in any of the Trade Marks or any part of one or more of them.

JKAA also indemnified JKA from all claims, actions, demands or losses for any past use by JKAA of the Trade Marks in Australia before the settlement date.

In return, JKA released the JKAA and its officers, servants and agents from the claims, and discontinued the Federal Court proceeding. Minter Ellison acted for the JKAA.

It is unusual to air a settled outcome but, in this case, the settlement was deliberately not confidential so as to send a loud signal to other member organisations in the federation of Japan Karate Associations throughout the world to dance nice with the one wot brung ya.

Nick Weston

Mars craters

NICHOLAS WESTON - AUSTRALIA — Sat, 27 Jun 2009 20:48:29 +1100

In Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606 the applicant Mars Australia Pty Ltd (Mars) has manufactured, distributed, marketed and sold a bite-size confectionary called Maltesers in Australia since 1989. The respondent (Sweet Rewards) has imported, distributed and sold a chocolate covered confectionary product known as “Malt Balls” since about the middle of 2005, principally through Target (in orange jars) but also through and Kmart, Coles, Franklins, Priceline, BI-LO, IGA, Dimmeys and a number of other discount stores (in red jars). The word Maltesers does not appear on the Malt Balls packaging. They are delicious, make you fat and rot your teeth. If you are a film critic, you can hold them in your hand until slightly molten then hurl them at the movie screen. Or not. Anyway, the red jars and the Mars packaging looked like this:

Mars made four claims about the two kinds of jars and labelling used by Sweet Rewards, namely that:

1. their distribution is unlawful because, the jars wrongly suggest a connection between Malt Balls and the Maltesers product which is non-existent;

2. the Malt Ball jars misleadingly represent to consumers that their contents are the same as Maltesers;

3. the use on the jars of a label with floating chocolate balls, some of which are sliced through showing a yellow filling, misleadingly represent to consumers that their contents are the same as Maltesers;

4. the jars infringe two registered trade marks owned by Mars.

Mars’ failed on all allegations and its application was dismissed with costs. Baker & McKenzie acted for Mars. Mallesons instructed Bruce Caine SC and Warwick Rothnie of IP Wars blog for the respondents.

Trade Practices Act claim – misleading and deceptive conduct

The Hon Justice Perram held that “the orange jar does not remotely resemble the Maltesers packaging or use all of the essential features of the Maltesers get-up. I do not think that the ordinary consumer of chocolate confectioneries could possibly mistake the orange jar for Maltesers. In my opinion, this claim by Mars is wholly unmeritorious”.

The Court also found against Mars in relation to the red jar, on four main grounds:

the word “Maltesers” or any other aspect of that word’s visual features or presentation is nowhere to be found on the red jar so there was no significant “source of confusion” causing the products to “misleadingly resemble” each other. As Perram J., put it : “it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success.”;
the word “Delfi” with a skier motif next to it is emblazoned on the label of the red jar in print half the size of the words “Malt Balls” was “a significant feature which finds no counterpart in the Maltesers get-up”;
the red of the Maltesers products is quite different to the red of the red jar.
while there was some limited similarity between the red jar and the Maltesers products in that “both are festooned with floating chocolate balls, this condition is not sufficient to overcome the effect of the words “Malt Balls”, the Delfi mark or the different red colouring”.

The first passing off claim – representations about source and origin

The Court noted that “where a party intends to misappropriate another’s goodwill the demonstration of that intention may well make it easier to draw an inference that the impugned conduct was misleading” then found as a question of fact that Sweet Rewards had not deliberately misappropriated the goodwill associated with the Maltesers products.

The second passing off claim – product equivalence representation

The decision continues: “Mars also argued that the red and orange jars conveyed representations that the Malt Balls they contained were made from the same ingredients, made from the same recipe or provided the same taste experience as Maltesers when eaten”. His Honour called this the “product equivalence representation.”

The Court held that “the get-up of the respective products was not deceptively similar” but said that “the red and orange jars [were] deceptively similar to the Maltesers get-up then I would be prepared to conclude that the [so called] product equivalence representation was made”.

Really? I mean, what His Honour says about get-up is uncontroversial but the idea of “product equivalence” seems, to this writer, to cover any get-up that descriptively or functionally represents chocolate coated honeycomb, which would be plainly wrong.

The third passing off claim – whether every Malt Ball represents that it is a Malteser

Mars contended that the get-up depicting floating brown balls with some cut-through to reveal a yellow centre necessarily connotes that the malt ball depicted is a Malteser.

The Court held that “most important aspect of the Maltesers get-up is the word Maltesers and the associated brand flag”. It also held that the words “Malt Balls” were a dead giveaway too, “extinguish(ing) entirely whatever limited capacity for confusion the floating balls might have otherwise had.”

The trade mark claims

Mars owned two relevant registered trade marks and agitated two issues:

1. whether Sweet Rewards’ use of the Malt Balls label was ‘use’ in a trade mark sense; and

2. whether the use by Sweet Rewards of that label, assuming it to be trade mark use, was deceptively similar to Mars’ trade marks.

1. Use

Mars had to demonstrate that Sweet Rewards’ use of the red jar label was use as a trade mark . This requires either that Mars show that the label was intended to be used to distinguish goods or services in the requisite sense or that it did in fact do so (see s 17 of the Trade Marks Act).

The Court held that there was trade mark use by Sweet Rewards but that it was only the Delfi mark, not the Maltesers mark.

2. Deceptive Similarity

On this element, the Court engaged in a straightforward application of the principles in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 [2004] FCAFC 196 which established a number of principles in considering whether a mark so nearly resembles another mark that it is likely to cause confusion or deception:

it is to be judged by an impression by persons of ordinary intelligence based on their recollection or imperfect recollection of an applicant’s mark;

the ‘idea of the mark’ is to be taken into account;

aural impression is taken into account;

risk of deception is taken into account and whether an ordinary person entertains a reasonable doubt;

where an essential feature or features of a particular registered trade mark are incorporated into another mark, that may well infringe the registered trade mark;

generally, reputation is irrelevant to the question of infringement except if a particular word or words has come to signify exclusively the goods of the proprietor of a mark (the mark including those words) then the use of that or those words by another would be an infringement; and

a mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods or services is a relevant consideration.

The Court concluded that the trade mark used by Sweet Rewards was the Delfi mark so that Mars’ claim tripped over at the first hurdle. The Court went on to find that “even if the trade mark use by Sweet Rewards were as Mars alleges (and it wasn’t), consumers are so familiar with Maltesers that they could not possibly be confused by the Malt Balls packaging – more formally, there is no likelihood of imperfect recollection by them of the Maltesers mark leading to confusion.” His Honour observed that “Maltesers” does not sound like “Malt Balls” found against Mars and awarded costs to Sweet Rewards.

Ruling on Evidence

Objection was taken by the respondents on Mars’ evidence of certain discussions a witness had with various retailers about the distribution of the Delfi products, the purpose which was to show that the reputation of the Delfi range was limited.

The Court held that the evidence was hearsay and declined to receive it pursuant to s 64(2) of the Evidence Act 1995 (Cth) as no notice had been given pursuant to s 67. The Court declined exercise its power to relieve Mars from the notice requirements pursuant to s 67(4) as the affidavit did not provide the particulars contemplated in the notice and was prepared five months in advance of the hearing.

The Court pointed out that the problem would have been fixed with a short affidavit from each person. But as the Court observed much earlier in the judgment [at paragraph 23]: “No reputation need be established in any feature of the respondent’s product in order to show that the applicant’s goodwill is being misappropriated or that consumers are, thereby, being misled. The making of an allegation by an applicant that a respondent’s product has a particular get-up, beyond and above it having particular features, serves no purpose.” In other words, the dud evidence was unnecessary. And inadmissible.

Nick Weston

Beware of cybersquatting on Facebook

NICHOLAS WESTON - AUSTRALIA — Tue, 16 Jun 2009 19:17:36 +1100

Facebook has announced that it will begin offering personalised username URLs to its users. On a first-come, first-served basis commencing 13 June, 2009 Facebook users are able to register personalised domain names such as www.facebook.com/yourname for their Facebook pages. Previously, a user’s Facebook URL was comprised of randomly assigned numbers.

Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog comments that offering such services is a new potential opportunity for trade marks infringers and cyber-squatters. These procedures may be abused by reserving your – or your client's - trade marks as their username and thereby hold themselves out as being affiliated with the genuine trade mark owner. For example, any particular user might register www.facebook.com/yourtrademark.

In anticipating that some of its users will want to set up URLs that include the trade marks of others, Facebook created an online form for trade marks owners to pre-emptively block people from including their registered trade marks in Facebook usernames but, apparently satisfied with that grand effort, closed this process within three days of its commencement.

Facebook still has an automated IP infringement form for those who wish to report that someone’s username infringes their trade marks rights. The complaint form is available at http://www.facebook.com/copyright.php?noncopyright_notice=1. For those who like to complain early and complain often, there is no cost to complain about trade mark rights being infringed using the online form.

Nick Weston

Qantas wins first prize for grammar

NICHOLAS WESTON - AUSTRALIA — Mon, 15 Jun 2009 15:36:29 +1100

In a recent decision by a Delegate of the Registrar of Trade Marks (Opposition by Virgin Blue Airlines Pty Ltd to registration of trade mark application No. 980223) Virgin has been unsuccessful in its attempt to stop Qantas from registering as a trade mark the slogan ‘ALL DAY, EVERY DAY, LOW FARES’.

At a Hearing in Canberra on 19 January 2009 before Delegate, Bianca Irgand, Virgin Blue Airlines Pty Ltd (Virgin) pursued three grounds of opposition under the Trade Marks Act 1995 (the Act).

For ease of reference, the relevant trade marks are:

‘ALL DAY, EVERY DAY, LOW FARES’ (the Qantas mark)

‘EVERY DAY LOW FARES’ (the Virgin mark)

Ownership – Section 58: Virgin argued that they were the rightful owners of the Qantas trade mark since they were prior users of the “substantially identical” Virgin trade mark. However, the deliberate use of punctuation and addition of words ‘ALL DAY’ in the Qantas trade mark were the focus of the Delegate in finding that the Section 58 ground had not been made out. The extra words combined with the importantly placed commas “served to create a strong impression of a three part slogan in the mind of the consumer”. With no form of punctuation in the Virgin trade mark and the particularly descriptive use demonstrated by Virgin the Delegate fell short of finding that the mark carried no inherent distinctiveness.

Reputation – Section 60: To succeed under Section 60 (pre-October 2007 amendment version) Virgin needed to point to a trade mark that was either “substantially identical” or “deceptively similar” that had acquired a reputation in Australia such that use of the Qantas trade mark would lead to deception or confusion.

On the basis of the “descriptive nature” of ‘EVERY DAY LOW FARES’ the Delegate found that the Virgin and Qantas trade marks were not deceptively similar. Regardless the Delegate went on to consider both the “use” and “reputation” requirements under Section 60, which is useful given the chances of another decision maker coming to a different finding on the question of deceptive similarity, as well as the fact that deceptive similarity is no longer a requirement under Section 60 of the Act. In particular, the Delegate was not satisfied that the Opponent’s “demonstrated” use of the expression ‘EVERY DAY LOW FARES’ was “use” as a trade mark nor that the Opponent had shown a reputation in the trade mark. More evidence, for example documentation supporting Virgin’s claim that ‘EVERY DAY LOW FARES’ was in fact a “specifically designed” trade mark may have convinced the Delegate otherwise.

Contrary to Law – Section 42(b): Further to the Delegate’s finding that the Qantas mark was not likely to deceive or cause confusion under Section 60 of the Act, she held that use of the opposed mark would similarly not offend Sections 52 and 53 of the Trade Practices Act 1974 (Cth) since proof of deception or confusion was even less onerous (the relevant supporting case law was cited).

Given the competitive nature of the no frills domestic airfares market, first captured by Virgin, this battle is unlikely to end here.

Lea Lewin

Recognising the Indications of Geography

NICHOLAS WESTON - AUSTRALIA — Thu, 28 May 2009 17:28:35 +1100

A recent decision by Justice Bennett concerning the use of the word ‘Bavaria’ in relation to beer has provided some interesting insights into the extent of protection provided for geographical indications under our trade mark legislation. The applicant, Bavaria NV, is a family-owned company incorporated in the Netherlands that makes beer, among other beverages. It had unsuccessfully sought registration of its trade mark for beer and appealed to the Federal Court when its application was denied as the result of an opposition hearing. The trade mark included the word ‘Bavaria’ which was displayed prominently within a device mark and which also contained other words, ‘Holland Beer’.

The successful opponent of the original application for registration was the Bavarian Brewery Association which represents the interests of well over 200 Bavarian breweries, some of which have been in business for centuries. Its opposition to registration was based on numerous grounds as is the custom in trade mark practice but it is the discussion about geographical indications and the application of Section 61 of the Trade Marks Act 1995 (Cth) which is the focus of this posting.

Section 61 provides that the registration of a trade mark may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods. Section 6 defines a geographical indication as a ‘sign recognised [in another country] as a sign indicating that the goods originated in that country, region or locality and have a quality, reputation or other characteristic attributable to their geographical origin.’

The expression ‘Bayerisches Bier’ which translates to Bavarian Beer is registered as a protected geographical indication (PGI) under the relevant EC regulations. As such it is recognised as the name of a region used to describe an agricultural product or foodstuff originating in that region and which possesses a specific, quality, reputation or other characteristic attributable to that geographical origin. The registration for a PGI can be contrasted with registration for Protected Designation of Origin (PDO) which requires that the goods have a quality or characteristic which is essentially or exclusively due to a particular geographical environment with its inherent natural and human factors.

There were two key points in the judgment that affect the application of Section 61. The first surrounds the use of the word ‘recognised’ in the definition of a geographical indication. Bennet J held that long term use is not enough in itself to constitute recognition and that the recognition would have to be formalised in some way in the relevant country by, for example, registration under some system of registration for geographical indication. Consequently, the expression ‘Bayerisches Bier’ is a geographical indication because it is registered pursuant to the EC regulations as a PGI and those regulations only permit registration when the necessary connection between the name of the region and the specific characteristic of the goods attributable to that geographical region has been demonstrated. Long term use short of formal recognition would not be sufficient although the judgment leaves open the possibility that recognition might flow from a court decision.

This view has particular significance for those countries that do not have systems of registration of geographical indications. In particular, one of the reasons often put forward for protecting geographical indications in international fora is that it allows developing countries to gain protection for the names of their agricultural products. The catch is that it seems they will have to have in place a system of registration of their geographical indications. In turn, this requires devotion of scare resources to the creation of a registration system when those same countries may well have other, more pressing priorities. But because they have not devoted as many resources to the issue.

The second key point of the decision is that it is not enough to demonstrate that the sign is substantially identical with or deceptively similar to the geographical indication in question. Those words which appear in other sections of the legislation such as Section 120 and Section 44 do not appear in Section 61. In other words, the sign in question and the geographical indication must be identical. Bennett J pointed out that ‘Bavarian Beer’ is not the same as Bavaria, even when that word appears on a beer bottle. For that reason alone, Section 61 did not apply.

The end result is that Section 61 may not have as many teeth in it as some may have thought. No doubt the EC will be quick to point out the ‘deficiencies’ in our legislation in the near future.

Mark Davison

Annual Nicholas Weston "Tattooed Brands" Global Survey 2009 Results

NICHOLAS WESTON - AUSTRALIA — Mon, 11 May 2009 14:19:04 +1100

The first annual Nicholas Weston "Tattooed Brands" Global Survey was conducted during May 2009 with 20 tattoo businesses in the suburbs of Melbourne, Australia surveyed using a telephone interview questionnaire. Conducted by Australian law firm and trade marks attorneys Nicholas Weston, the survey asked tattooists whether they had ever tattooed a registered trade marked brand or logo onto someone's body and if so, which ones are popular, what age groups get them and whether the recipient was drunk or affected by drugs at the time.

Surveys are typically conducted as an important tool to find out what is vital to the community, and where to prioritise spending or effort. In this case, the survey is motivated by an inordinate interest in the self-mutilation of others combined with a gratuitous exercise in self-promotion, sorry, law firm marketing. Nicholas Weston is pleased to share its findings in the annual survey with the global community.

The highlights from the 2009 Survey are summarised below.

Top Twenty Trade Marks Tattooed onto People (Ranked from Most Popular to Least Popular):

1. Harley Davidson

2. Nike

3. AFL (Australian Rules) club logos

4. Vegemite

5. VB

6. Disney characters (various)

7. Holden

8. Ford

9. Fox/Alpinestars (motorcross)

10. Triple J (radio)

11. Louis Vuitton

12. Chanel

13. Playboy

14. Coca-Cola

15. Jack Daniels

16. Jim Beam

17. Mountain Dew

18. Qantas

19. Triumph (motorcycles)

20. Gibson/ Fender

Summary of 2009 Survey Results

Of those receiving a tattoo, only around 2 – 5% receive a brand tattoo, and predominantly in the 18 – 25 age group. In every case, the brand tattoo was requested by the recipient rather than suggested by the tattooist. Tattooists also said that brand tattoos were obtained on impulse in some cases and as a carefully considered choice in others. Opinion among tattooists was divided on whether the choice of brand- tattoo reflected its culturally iconic status or the recipient's faith in the brand. One tattooist opined that "it is a humour thing." One tattooee received payment to have toilet rolls of a certain brand inked onto his backside but otherwise the overwhelming majority were not paid to become human billboards. All of those surveyed denied that any recipients of a brand tattoo were visibly drunk or affected by drugs at the time.

A copy of the questionnaire is located here. The next annual survey will be conducted in May 2013 and the results should be available in October 2026. We have already started drinking heavily in anticipation.

So what?

Most well known brands and logos are registered trade marks. Use of a registered trade mark as a tattoo is generally not “use as a trade mark” by using the sign in the course of trade for the purposes of s 120 of the Trade Marks Act 1995 (Cth).

However, for those of you keen on things Biblical, the pagan custom of tattooing symbols on human flesh is verboten by G_d: "Ye shall not make any cuttings in your flesh for the dead, nor print any marks upon you: I am the LORD": Leviticus 19:28. Brand worshippers and trade marks idolaters may be answering to a higher authority in due course (and they will be easy for Him to spot).

About Nicholas Weston

Founded in 2005, Nicholas Weston is ranked two years running (2008 and 2009) by Managing Intellectual Property Magazine’s World Survey for 'Trade Mark Prosecution' and 'Trade Mark Contentious'. The firm claims practical implementation of thought leadership. Nicholas Weston serves the creative and technology sectors and sectors being transformed by technology.

For more information contact:

Nicholas Weston Lawyers & Trade Marks Attorneys

Ground Floor, 156 Collins Street, Melbourne Vic 3000 Australia

T: (+ 61) 1300 132 551

mail@nicholasweston.com

www.nicholasweston.com

Things just got UGGlier

NICHOLAS WESTON - AUSTRALIA — Tue, 21 Apr 2009 08:49:41 +1100

In Deckers Outdoor Corporation Inc. v Farley (No 2) [2009] FCA 256, Deckers Outdoor Corporation, responsible for the well known sheepskin boots sold under the ‘UGG’ brand, has been successful in its application for summary judgement for trade mark infringement of its composite trade mark No. 785466. The Court has postponed making an order with respect to compensatory damages until further supporting evidence is presented.

As to its claims for declaratory and injunctive relief for copyright infringement, passing off and trade practices breaches Deckers was unsuccessful. Deckers has become renowned for aggressive enforcement of its intellectual property rights. In view of this positive finding of trade mark infringement, only time will tell whether it continues to pursue these other causes of action, particularly a damages claim for flagrant copyright infringement under Section 115(2) of the Copyright Act 1968 (Cth).

Background

Deckers Outdoor Corporation Inc. (Deckers) and its predecessors have designed, manufactured and sold footwear under the UGG brand in Australia and overseas for over twenty years. In 2003 Deckers became aware that counterfeit UGG products were being manufactured in Melbourne after search orders for a factory in Moorabbin were granted in their favour. Upon discovering the counterfeit products Deckers entered into a settlement agreement with Vladamir Vaysman, Victoria Vaysman and Hepbourne Pty Ltd and these parties also consented to orders restraining them from dealing with footwear bearing the words “UGG” or “UGG AUSTRALIA” or a “sun device” logo. However, the first settlement agreement was breached and a second settlement agreement entered into whereby those same parties, or any entity controlled by them, could not use the word “UGG” to describe or offer for sale any sheepskin products whatsoever.

Late in 2007 Deckers again discovered counterfeit “UGG” footwear being promoted and sold, in this instance on the internet. Deckers filed another claim. Search orders were granted and following an examination of documents seized under those orders, Deckers amended its Statement of Claim to include 22 respondents. Many of these claims have now been settled with only 6 respondents remaining: Hepbourne Pty Ltd, Vladamir Vaysman, Josef Vaysman, Polina Vaysman, Victoria Vaysman and Samba Enterprises Pty Ltd (the Respondents). The present decision relates to an application for summary judgement against the Respondents under Section 31A of the Federal Court of Australia Act 1976 (Cth) in respect of the following claims: declaratory and injunctive relief for trademark and copyright infringement, passing off and breaches of Sections 52 and 53 of the Trade Practices Act 1974 (Cth) as well as state legislation. This case note will focus largely on the trade marks aspect of the claim.

Deckers is the owner of composite trade mark No. 785466 registered since February 1999 and comprising the letters “UGG” below which appears the word “australia” below which appears a “sun device” logo (the Trade mark). This Trade mark, as well as other related marks owned by Deckers, has attracted considerable media coverage and attention and a comprehensive fact sheet on the registrability of the words “UGG” and “UGH” published by IP Australia can be accessed HERE. Deckers allege that the Respondents have infringed the Trade mark by using a mark which is substantially identical or deceptively similar to the Trade mark in connection with the footwear in respect of which the Trade mark is registered.

The Decision

To start the Court outlined that Section 31A of the Federal Court of Australia Act 1976 (Cth) empowers a court to give judgement in favour of an applicant if it is satisfied that the respondent “has no reasonable prospect of successfully defending the proceeding”.

In support of its claim of trade mark infringement Deckers relied on evidence from respondents who had been involved in the marketing of footwear manufactured at the Moorabbin factory, footwear ceased from the Moorabbin factory and advertising and markeing material. In light of this evidence, the Court found that the Respondents were manufacturing, packaging and distributing boots which had on their heels the “UGG australia” label and on their soles the embossed letters “UGG” in association with the “sun device” logo. The case then turned on the similarities between the registered Trade mark and the “counterfeit” products.

The Respondents all argued that the three elements of the Trade mark (the word “UGG”, the word ‘australia” and the “sun device” logo) did not all appear together on the boots or packaging and therefore argued that the marks in question were not deceptively similar. The Court found that this issue could only be determined having regarding “to the circumstances in which the goods were bought and sold and the characteristics of the persons who might be expected to be purchasers of the footwear”. The Court held that the impression created, and “intended to be created” (for example by use of the ® symbol next to the letters “UGG”) made it plain that it was an attempt by the Respondents to suggest that the boots were made by Deckers. The Court was left with no doubt with respect to the “likelihood of confusion and deception as to the provenance of the boots”.

The Court then considered the Respondents submission that there was a reasonable prospect that the Trade mark should be cancelled under Section 88 of the Trade Marks Act 1995 (Cth). This raised the same issue that was dealt with by the Trial Judge in E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 and discussed HERE by the Australian Trade Marks Law Blog, namely retrospective operation of orders made by a court under the Trade Marks Act. Along the same reasoning, the Court held that a successful cross claim under Section 88 would have no bearing on whether or not they had infringed the Trade mark during the relevant period since any order could only be “prospective in nature”.

Accordingly, Deckers was entitled to summary judgment on its claim that the Respondents had infringed the Trade mark in 2005, 2006 and 2007. As to Deckers claim for a declaration to pay compensatory damages, the Court held that the evidence put forward was not specifically directed to damage flowing from the trade mark infringement and that such evidence would need to be adduced and a claim for compensatory damages made.

Other Findings

Copyright Claim: Deckers claim for summary judgment with respect to copyright infringement of numerous literary and artistic works was rejected. The Court’s decision was based on the following issues raised by the Respondents:

- a dispute as to ownership of some of the copyright works;

- the question of whether the words “UGG australia” could attract copyright protection; and

- the potential for a successful defence under Section 77 of the Copyright Act 1968 (Cth)

Substantial Reputation: With regard to their application for declaratory and injunctive relief for passing off and trade practices breaches, Deckers pleaded that it had a substantial reputation both in Australia and overseas. However, no supporting evidence was presented and Deckers sought to rely on deliberate copying by the Respondents as evidence of their reputation. The Court found that without direct evidence, perhaps “expert evidence” it could not conclude that “the Respondents have no reasonable prospect of defending this aspect of Deckers” claim.

Lea Lewin

Lion Nathan legs it with Barefoot

NICHOLAS WESTON - AUSTRALIA — Tue, 31 Mar 2009 08:34:41 +1100

In E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 the Full Federal Court has affirmed a first-instance decision to remove E & J Gallo’s ‘BAREFOOT’ trade mark from the Register for non use, thus confirming that Lion Nathan has the right to market its 'BAREFOOT RANDLER' beer product. Whilst confirming the first instance decision to remove the 'BAREFOOT' trade mark, the Appeal Court overturned the Trial Judge's finding that beer and wine are not ‘goods of the same description’ and held that Lion Nathan was infringing the ‘BAREFOOT’ trade mark during the 6 month period which it remained on the Register and Lion Nathan had sold its ‘BAREFOOT RADLER’ beer.

So although ultimately losing their trade mark, the Appeal may have proven worthwhile for E & J Gallo. This will be clearer when the question of remedies for the period Lion Nathan was infringing Gallo's trade mark is resolved. On the other hand, the finding that wine and beer are 'goods of the same description' has opened the door for Lion Nathan to bring its own infringement action.

Background

E & J Gallo Winery (Gallo) is a large wine-producing company incorporated in the United States whom in 2005 acquired the share capital in a company trading under the name ‘Barefoot Cellars’. As part of that deal they acquired the Australian ‘BAREFOOT’ trade mark for wine in Class 33. Although ‘BAREFOOT’ was very successful in the United States, only a very limited quantity of the wine had been sold by Beach Avenue Wholesalers Pty Ltd (BAW) in the Australian market during the period from 7 May 2004 to 8 May 2007 (the non-use period). Importantly, there was no evidence that Gallo, or its predecessor, knew about these sales.

In 2006 Lion Nathan Australia Pty Limited (Lion Nathan) began to develop a new full strength, carbon-neutral beer with lemon and lime twist which they coined ‘BAREFOOT RADLER’. Upon learning of Gallo’s ‘BAREFOOT’ trade mark they commissioned some investigations into the use of that mark. Lion Nathan’s investigations revealed no use and filed an action for removal in the Australian Trade Marks Office in May 2007. They proceeded to launch their beer product in January 2008.

The beer launch proved too much to, er, bear, and Gallo initiated proceedings in the Federal Court against Lion Nathan for trade mark infringement. Lion Nathan then brought itsremoval action to the Federal Court by way of a cross-claim. Both actions were heard together in April 2008. The decision was reported by the Australian Trade Marks Law Blog here. In that case, Flick J found in favour of Lion Nathan in both its defence to infringement and its counter-claim to have Gallo’s ‘BAREFOOT’ trade mark removed from the Register for non use.

In July 2008 Gallo appealed with respect to Flick J’s decision on (i) non use of the ‘BAREFOOT’ trade mark and (ii) whether the good in question, beer and wine, were ‘goods of the same description’. Lion Nathan’s cross-appeal concerned the date upon which the removal order should commence arguing that the date should be 8 May 2007 rather than 27 June 2008 (the date of the decision).

The Appeal Decision

The decision was broken up into two questions:

Was there use of the ‘BAREFOOT’ trade mark during the non use period for the purposes of Section 92(4)(b) of the Act?

The Court acknowledged that there was no direct authority on the issue of ‘whether, when a registered trade mark is used in Australia on, or in physical or other relation to the goods, which are offered for sale and sold here but manufactured overseas by an owner or authorised user of the mark who applied the mark to them, the use of the mark constitutes a use by the owner, even though that person may not know that the goods are being offered for sale or sold in Australia but rather sold them to a foreign distributor for resale without any limitation on where they might be resold’.

Along the same lines as the Trial Judge the Court rejected Gallo’s submissions and found that ‘use’ is not made out merely because goods to which a trade mark has been affixed by the owner, or an authorised user, are traded in the ordinary course of trade in Australia. Rather, the ‘owner must have engaged in conduct of some type which the owner might reasonably contemplate would result in dealings with its goods marked with its mark in Australia while the goods were in the course of trade’.

The Full Court went further in its analysis to find that in order for the statutory scheme of the Act to be a cohesive one, the use to which Section 92 of the Act is directed ‘is use of the same character which would warrant registration of the trade mark in the first place. That is conduct, by or on behalf of the owner, associated with a witting or deliberate use of the trade mark in Australia.’ There was no course of trade as between Gallo and BAW or any other party in Australia.

Finding that the ‘BAREFOOT’ mark should be removed the Court then considered the cross appeal. The Full Court noted that Section 101(2) of the Act is clear because it is ‘an order directing someone to do something’. Accordingly, the act of the Registrar removing a trade mark from the Register can only be done after the order is made. An investigation into whether such an order can be made retrospectively was held to be a ‘false issue’. Infringement of a trade mark during the time that it remains on the Register is therefore possible.

Are beer and wine ‘goods of the same description’?

Rather than look at the question of whether beer and wine are ‘goods of the same description’ in isolation the Full Court found it was relevant to note the purpose or object of Section 120(2) as protecting the statutory monopoly a registered owner has to use their mark. In this context they found this requires a ‘consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner’. When looked at through this prism, it is clear how late on a Saturday evening one might think that beer and wine are ‘goods of the same description’. The Full Court overturned Flick J’s finding on this issue.

The question of deceptive similarity between ‘BAREFOOT’ and ‘BAREFOOT RADLER’ was decided in the affirmative leading to the conclusion that Lion Nathan had infringed the ‘BAREFOOT’ mark from the time it launched its product in January 2008 until the date of the Federal Court decision.

So What?

By affirming Flick J’s decision on the issue of non-use, trade mark owners, particularly foreign ones, need to be conscious that Australian trade marks may be vulnerable if the owner does not put their products into the Australian market either directly or through an authorised user.

Also, the vibe of the recent major non-use cases is that trade marks clearance searches MUST include related classes and potential uses, even if the goods or services at issue face little risk of technological convergence with others. In the Pioneer decision (a convergence case) discussed by the Australian Trade Marks Law Blog here, Bennet, J., chose to exercise her discretion in allowing Pioneer to retain its trade mark in circumstances where some argue there had not been use in the broad category of ‘computer peripheral’ goods for a period of three years. In the Bing! software case (another convergence case) discussed by the Australian Trade Marks Law Blog here, a partial non-use application might have led to a different result. The vibe, and our recommendation , is to search widely when selecting a mark.

Lea Lewin

Novel domain name decision clarifies tests for consolidation of multiple complainants

NICHOLAS WESTON - AUSTRALIA — Mon, 23 Mar 2009 23:35:57 +1100

In National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd (WIPO Case No. DAU2008-0021) an Administrative Panel Decision of the WIPO Arbitration and Mediation Center handed down on 6 March, 2009, the Complaint was submitted by nine complainants against one respondent. The complainants (whom were commonly represented by one law firm) each operate businesses that deal in ‘smartnumbers’: or, in other words, freephone or local rate phone numbers. These are numbers auctioned by the Australian Communications and Media Authority that are numerically alliterative (e.g. 1800 222 222) or those that translate to a "phoneword" when the suffix digits are selectively mapped to the letters on an alphanumeric keypad (e.g. 13 2287, which translates to 13 CATS).

The Respondent, it was alleged, operates a business that had registered sixty-six disputed domain names comprising the Complainants’ phonewords with the addition of the suffix ".com.au".

The Complaint raised a novel procedural issue for which the auDRP contains no express provision: whether a single complaint may be filed against a single respondent by multiple complainants or, in other words "consolidation of multiple complainants" as distinguished from similar issues like consolidation of multiple domain names, consolidation of multiple respondents and consolidation of multiple complainants and respondents.

Panelist, Professor Andrew Christie enumerated ten principles to help guide determination of this issue, as follows:

Just kidding. I am not going to list them. Prolonged exposure may cause brain damage. Thrillseekers may read them HERE.

The Panel ordered that the Complaint be dismissed, subject to the right of (any or all of) the Complainants to file, in their individual capacity, should they wish to do so, a complaint against the Respondent in relation to any of the domain names (in respect of which such individual Complainant asserts applicable rights under the Policy) that are the subject of the Complaint.

Nick Weston

Pioneering Decision on Non-use

NICHOLAS WESTON - AUSTRALIA — Mon, 09 Mar 2009 20:48:18 +1100

Pioneer KK, the makers of quite well known audio, audio-visual and home entertainment products have had a big win in an application against them for non-use of their trade mark on a range of goods. In Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135 (23 February, 2009), the battle lines were drawn between the applicant for removal, Pioneer Computers (‘the new guys’), which used the sign Pioneer on its computer products and Pioneer KK (‘the old guys’), the company that sells the home entertainment products under the Pioneer brand that most of us are probably familiar with.

The problem here was that the old guy’s original registration in Class 9 for Pioneer was quite broad. It included ‘computers, computer peripheral devices, computer keyboards; computer memories; printer for use with computers… computer software’ as well as the home entertainment equipment for which the old guys are known. The new guys started up in late 1996 and had been selling computers and computer products since then with the knowledge of the old guys but the old guys, it seems, have had enough and wish to enforce their strict statutory rights. While they retain registration in respect of computers, they can require the new guys to cease using selling Pioneer computers by relying on s120(1) of the Trade Marks Act 1995 (Cth). Effectively, the provision is a strict liability provision and the old guys would not have to prove confusion and the new guys would have no defence even if there was proof of a lack of confusion. The other infringement provisions in s120(2) and (3) are more conditional and offer opportunities for consideration of the likelihood of confusion. They apply where the defendant’s use is on goods for which the trade mark owner does not have registration.

The intriguing part of the decision is that the old guys did not use their trade mark for computers during the non-use period and they have absolutely no intention of making or selling computers. Yet Bennett J exercised her discretion to allow the old guys to keep their registration which means the new guys need to stop using Pioneer on their computers.

A few things about the law of non-use generally

The decision makes a few observations about the Australian law of non-use generally and draws some interesting conclusions about the application of those principles to ‘new’ technology or, more relevantly, the convergence of technologies. A few basic points about Australian non-use law can be made. First, the Court has a general discretion under s 101(3) to retain the registration even if there has been non-use. It need only decide that it is reasonable to do so and there does not have to be any special circumstances. Section 101(4) provides that one discretionary factor is whether the trade mark has been used on similar goods. In this context, that means the issue is whether it has been used on goods of the same description.

Convergence issues

These points become of particular significance in the context of technological convergence. Much of the evidence was directed to the proposition that computer technology and home entertainment technology had converged to the point where ‘the public would not draw a distinction’ between computers sold by the new guys and audio-visual equipment sold by the old guys. The basic proposition being put was that things that play music are now computers and computers play music, among other things. Throw in the existing strong reputation of the old guys and the combination of brand extension and technology convergence meant that Bennett J thought it was not in the public interest to remove the old guys’ registration for computers. As a consolation prize to the applicants, she did say that her discretion would only be exercised upon the old guys giving an undertaking not to sue in respect of past use and giving the new guys a reasonable time to wind up the sales of its Pioneer computers. The end result though is that the new guys need to leave the field and that no-one in Australia will ever sell a Pioneer computer because the old guys do not want to, the new guys can not and, after this decision, anyone else who thinks about it would be plain silly.

As an aside, the old guys had a very aptly named marketing expert called Mr Blanket which is entirely appropriate for an expert advocating for retention of registration over a broad range of goods even when there has been no use and is no intention to use the trade mark in respect of a number of those goods.

Consequences

Now I don’t want to be a wet blanket here but there are a few issues to consider. The first is that while there was a fair bit of discussion about s101(4), the relevance of use of the trade mark on goods of the same description, there was, I think, an unnecessary convergence of this issue with another issue. There was no express finding that what the old guys sold were goods of the same description as computers. There was a finding that ‘the public would not draw a distinction between the removal goods and the goods sold by the old guys’ because of technology convergence and the old guys’ reputation. It would be disappointing if likelihood of confusion became the test of goods of the same description. If it did, that would take a lot of the fun out of distinguishing between ss 44 and 60 of the legislation.

Second, the convergence argument is a bit of a worry. Its limits were not fully explored. For example, just about everything that involves electricity these days uses digital technology. While the same manufacturer may well sell all sorts of digital products and computers, I’m not completely convinced that the public is unable to distinguish between them. Just because a computer can perform basically all functions those digital items can does not mean that they are one and the same thing and certainly not goods of the same description. Try this analogy. I’m a parent. I cook, I clean and I drive offspring to and fro. Does this mean that a chef, a cleaner and a limousine driver are the same as parents in the eyes of the public? After all, they do the same thing.

Third, Bennett J considered that there would be no detriment to the public from requiring the old guys to give that undertaking not to sue in respect of past use or future use for a reasonable time. Now, if there was no detriment to the public from the past use and there would be no detriment to the public from future use for a reasonable period of time and the old guys are never going to make a computer called Pioneer, why are they being given a lay down misere cause of action under s120(1)? Why should they not be required to win their action under s120(2) or s120(3) and run the gauntlet of evidence about whether the public really is unable to distinguish between the different products on offer.

Mark Davison