Snakes and No Ladders: Hoser v Bunnings Group Ltd & Anor [2017] FCCA 1624 (13 July 2017)

Mr Raymond Hoser describes himself as a “globally recognised reptile expert” and is a government-licensed wildlife demonstrator. Mr Hoser owns registered Australian trade marks for the term “snake man” and “Snake man”.

Mr Hoser initiated an interlocutory application with the Federal Circuit Court seeking to prevent Mr Michael Alexander from using, amongst other things, “Snake man” in the course of trade. Mr Alexander conducts business under the name “Black Snake Productions,” which also provides government-licensed wildlife demonstrations. Mr Alexander is a competitor of Mr Hoser.

The case also involves another respondent, Bunnings Group Limited, a well-known hardware retail chain. Bunnings hired Mr Hoser to conduct many live reptile shows around Victoria during the period between 2011 and 2014. However, Bunnings eventually stopped hiring Mr Hoser and engaged other wildlife demonstrators to provide reptile shows. According to Mr Hoser, Bunnings secured Mr Alexander’s services for its Ringwood store on two weekends in 2016, and heavily advertised it as “The Snake Man.” Mr Hoser said he was claiming damages of $5.3 million, but this was unsubstantiated by evidence. (Mr Hoser was self-represented.)

Mr Alexander argued that the terms were descriptive. The court agreed, noting that even if Mr Hoser was the first person in Australia to use the terms as a trade mark, he had lost exclusive rights to the trade marks if they have become generally recognised in the relevant trade as descriptive of the relevant services. The court formed the view that this had occurred. The judge noted, “In my view, on the material and arguments presently before the court, there is not a serious question to be tried in this case because the prospect of the applicant succeeding is very remote.”

Inevitably, the court cited Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216 at 231, which in essence says that there is a price to pay for adopting a descriptive name as a brand. The court, also inevitably, cited the section 24 of the Trade Marks Act 1995, which is concerned with generic trade marks:

This section applies if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.

(2) If the trade mark consists of the sign, the registered owner:

(a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to:

(i) the article or substance or other goods of the same description; or

(ii) the service or other services of the same description; and

(b) is taken to have ceased to have those exclusive rights from and including the day determined by the court under subsection (4).

(3) If the trade mark contains the sign, the registered owner:

(a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:

(i) the article or substance or other goods of the same description; or

(ii) the service or other services of the same description; and

(b) is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4).

(4) For the purposes of subsections (2) and (3), a prescribed court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service.

Mr Hoser obtained the trade mark (TM 1175589) for “snakeman”, without objection from the examiner at IP Australia, with a date of filing of 11 May 2007. Mr Hoser acquired a second, somewhat broader registration for “Snake man” (1214301) with a priority date of 7 December 2007, overcoming an objection from the examiner apparently with a declaration containing evidence of use. Mr Hoser applied for these marks without assistance from an IP lawyer or trade mark attorney, and as stated above, was self-represented in court. It is not IP Australia’s job to tell Mr Hoser about the limitations of his trade mark. But Mr Hoser had two trade mark registration certificates, issued by a federal government agency, which he plainly believed would protect his rights and his brand. You can’t blame Mr Hoser for misunderstanding why he thought he could stop Bunnings with an urgent interlocutory injunction.

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