Trade Mark & Branding Registration, Strategy & Enforcement

Williams + Hughes Earns Recertification in Meritas, the Leading Global Alliance of Independent Business Law Firms

Williams + Hughes is pleased to announce that it has been awarded recertification in Meritas, a global alliance of independent business law firms. Williams + Hughes joined Meritas in 2014 and, as a condition of its membership, is required to successfully complete recertification every three years. 

Meritas is the only law firm alliance with an established and comprehensive means of monitoring the quality of its member firms, a process that saves clients’ time validating law firm credentials and experience. Meritas membership is selective and by invitation only. Firms are regularly assessed and recertified for the breadth of their practice expertise, client satisfaction and high standards of cybersecurity to keep legal information safe. Meritas’ extensive due diligence process ensures that only firms meeting the tenets of Meritas’ unique Quality Assurance Program are allowed to maintain membership. The measurement of the firm’s performance, based on input from clients, is reflected in a Satisfaction Index score, which is available online on the Meritas website.

“Our values of quality service and client satisfaction align with the Meritas mission to provide a safe and responsive global offering to clients,” said Damian Quail, Director. “We’ve successfully collaborated with colleagues in many jurisdictions around the world to solve client issues and help them seize opportunities outside of this market. We look forward to keeping those vital connections through membership in Meritas.”

The recertification process Williams + Hughes completed to maintain its membership status included exacting self-assessment, peer review by other law firms and client feedback.  

“Businesses trust the Meritas alliance of law firms for top-tier quality, convenience, consistency and value,” said Sona Pancholy, president of Meritas. “Williams + Hughes has demonstrated its commitment to world-class legal standards, and therefore has successfully earned its recertification in Meritas.”

For more information about our our membership in Meritas, please see here

About Meritas 

Meritas’ global alliance of independent, market-leading law firms provides borderless legal services to companies looking to effectively capture opportunities and solve issues anywhere in the world. Companies benefit from local knowledge, collective strength and new efficiencies when they work with Meritas law firms. The personal attention and care they experience is part of Meritas’ industry-first commitment to the utmost in quality of service and putting client priorities above all else. Founded in 1990, Meritas has member firms in 259 markets worldwide with more than 7,500 dedicated, collaborative lawyers. To locate a Meritas resource for a specific need or in a certain market, visit Meritas.org or call +1-612-339-8680

Meritas Welcomes DMAW Lawyers, Adelaide, to the Membership

Leading Adelaide commercial Firm, DMAW Lawyers has been selected to be South Australia’s representative firm for Meritas, the premier global alliance of independent law firms.

DMAW Lawyers will become an integral part of the Australia & New Zealand network of firms as well as the worldwide network of 191 law firms located across 96 countries.

This alliance will enhance DMAW Lawyers’ ability to support South Australian business interests both nationally and internationally.

DMAW’s Lawyer’s Managing Director, Mr Leo Walsh said “One of most attractive benefits of belonging to this network was the opportunity for our lawyers to participate in national and global conversations on business and legal issues. Not only does this expand our thinking, and add to our technical skills, but it help our lawyers build trusted, reliable relationships with lawyers in the regions that matter to our clients. Already we’ve participated in meetings with Insolvency experts across the country and with Senior Partners in Shanghai and Tokyo.”

Mr Mike Worsnop, Partner with Martelli McKegg in New Zealand and Co-Chair of Meritas ANZ: “We are delighted to have DMAW Lawyers join our group. Not only was their quality apparent but they’ve been very easy and responsive to deal with during our discussions.  They clearly demonstrated the type of service clients look for when using a firm in a different market.”

“DMAW Lawyers had to meet the rigorous requirements to become members of Meritas, the only law firm alliance with a Quality Assurance Program that ensures clients receive the same high-quality legal work and service from every Meritas firm.”

Meritas membership is extended by invitation only, and firms are regularly assessed for the breadth of their practice expertise and client satisfaction.

Ms Sona Pancholy, Meritas CEO: “In today’s environment having a commitment to a reliable network is more important than ever. Independent law firms, Corporate Counsel, Business Owners and their Commercial Advisors, all choose their portfolio of trusted legal relationships to match the issues and the markets they want to navigate. For 30 years, Meritas has cultivated a group of the best firms for this purpose.”

About DMAW Lawyers

DMAW Lawyers was established in Adelaide in 2002. The firm has ten Principals and a team of 50 staff. DMAW Lawyers focus on three areas of specialization being Corporate, Transactions, and Disputes for Business Clients.

Website: DMAW Lawyers

About Meritas

Founded in 1990, Meritas is the premier global alliance of independent law firms. As an invitation-only alliance, Meritas firms must adhere to uncompromising service standards to retain membership status. With 192 top-ranking law firms spanning 96 countries, Meritas delivers exceptional legal knowledge, personal attention and proven value to clients worldwide.  

Website:  Meritas 

In Australia and New Zealand, Meritas is represented by leading independent commercial law firms in each of these six major capital cities:

In Australia

Adelaide DMAW Lawyers

Brisbane Bennett & Philp

Melbourne Madgwicks Lawyers

Perth Williams+Hughes

Sydney Swaab  

In New Zealand

Auckland Martelli McKegg

Privacy policies and procedures: Australian businesses may have to comply with European GDPR laws

On Friday 25 May 2018 the EU General Data Protection Regulation (GDPR) came into effect, giving residents of the EU increased control over their personal data. Importantly, GDPR extends far beyond the boundaries of Europe.

Here we have summarized what this means for Australian businesses.

Does it apply to my Australian business?

GDPR can apply to businesses incorporated outside of the EU, regardless of their size.

GDPR applies to Australian businesses that:

• have an establishment in the EU;
• offer goods or services to EU individuals (including where no payment is required); or
• monitor the behaviour of EU individuals e.g. through the use of website “cookies”.

If an Australian company has an office in the EU, sells goods or services to people in the EU, or processes or handles data relating to EU individuals – even if that data processing occurs only in Australia - that is usually enough to bring the company within the scope of GDPR.

The fact that people in the EU can access a website is not enough to bring the company within GDPR. However, using a European language or currency on your website, or mentioning customers or users who are in the EU, can be considered having an intention to offer services to EU individuals. This will bring any data concerning those EU individuals within GDPR, and so the Australian business will need to comply with GDPR.

Who and what are covered?

The GDPR covers the “personal data” of an “EU individual”. The concept of an “EU individual” extends to EU residents, EU citizens and citizens of other countries who are temporarily in the EU. This could include an Australian resident working temporarily in the EU. The scope of “personal data” is broad - it includes any data set which can identify or single out an individual. It is broader than the definition of personal information under Australian legislation.

Importantly, GDPR focusses on the person to whom the information relates, not where the information handling or processing actually occurs.

So, an Australian company that uses computer servers provided by third parties to process the personal data of an EU individual (e.g. Amazon or Microsoft Azure servers) is bound by GDPR even if those servers are located outside of the EU. GDPR extends far beyond the boundaries of Europe.

If an Australian company has European customers, then they msut comply with GDPR.

We comply with Australian Privacy Laws, isn’t that enough?

Unfortunately it is not that simple. Although the Australian Privacy Act 1988 (Cth) and the GDPR have similar requirements, some requirements of GDPR are stricter than those under Australian privacy law. For example:

• Active, informed, specific consent must be obtained from EU individuals regarding use, collection and storage of their personal information. Companies cannot rely on pre-ticked boxes, opt-out clauses, bundled consents or employment contracts for consent. Privacy and consent cannot be obtained via clause 65 of a privacy policy on your website.
• Companies must notify EU individuals within 72 hours of a data breach occurring. This is a very short timeframe from discovery of a breach. Companies will need to put in place processes to deal with a breach before any breach actually occurs.
• Specific steps must be taken by a company when transferring personal data outside of Europe or to a third party commercial services provider.
• Companies must implement appropriate technical and organisational measures and processes, including data protection policies, to ensure and be able to demonstrate that data processing and retention complies with GDPR. Importantly, there must be “data protection by design and by default”.
• EU Individuals have a “right to be forgotten” under GDPR which does not yet exist under Australian privacy law.

If GDPR applies to your business, you may need to update your privacy policy and procedures to ensure compliance with these rules.

Alternatively, you may need to implement strategies to remove your business from the scope of GDPR. We can assist in this regard. 

Europe's Regulatory Focus- will non-EU companies be fined?

The processing of employee data, such as payroll data, has been identified by EU regulators as a key area for protection. Any Australian business that seriously breaches GDPR in relation to EU employee information could be the subject of enforcement action by EU regulators. In the event of a serious data breach, fines may be imposed. Fines under GDPR can be extremely high - up to €20 million or 4% of annual worldwide turnover, whichever is greater.

Importantly, European regulators are taking action against non-EU companies. The first company to be fined under GDPR by the UK's Information Commissioners Office (ICO) was a Canadian company with apparently no EU presence. The ICO also issued a formal warning under GDPR in November 2018 to the Washington Post over how it was obtaining consent for cookies on its website. The ICO did not take the matter further at the time, and presumably will not in a post-Brexit world. However, it is clear that European regulators may target companies outside of Europe in sufficiently serious cases.

Also, any EU individual whose data has been compromised as a result of an unauthorised disclosure or data breach can take action directly against an Australian company under GDPR.

Many countries are following GDPR

Legislation similar to GDPR has already been passed in many jurisdictions outside of Europe. Other non-European countries are currently updating their privacy laws as a response to GDPR. These countries include Argentina, Bahrain, Brazil, China and Hong Kong, Iraq, Israel, Kazakhstan, Norway, Panama, Peru, Russia, Singapore, California and the United Kingdom. Australian companies operating in, or with customers in, these countries will need to be sure they comply with those laws.

What to do now

The message is clear. Many Australian companies holding or processing personal data of an EU individual should:

• Review their current data processing practices to understand what data is collected, processed and retained
• Determine whether current information handling, security and retention practices comply with GDPR
• Update privacy policies, practices and procedures if GDPR is applicable
• Put in place measures to deal with a data breach before one occurs
• Obtain formal contractual guarantees from third party service providers (e.g. who host or process relevant data) that they are compliant with GDPR.

For Australian companies that wish to avoid the cost of dealing with GDPR, there are strategies that can be implemented to remove their business from the scope of GDPR.

If you have any questions about your company’s obligations or need help to comply with GDPR or avoid GDPR, please contact Damian Quail in our Perth office.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

Peanut Butter Battle of Jars and Trade Marks

Peanut butter is big business in Australia.  In 2017 the Australian peanut butter market was worth $110 million in annual sales. A brand recognisable to many Australians - Kraft peanut butter - has been available for purchase in Australia since 1935.

The Federal Court recently handed down judgment in a dispute between Bega Cheese Limited and Kraft Foods Group over the appearance of product packaging (trade dress, also known as “get up”) and copyright in a “peanut butter jar with a yellow lid and a yellow label with a blue or red peanut device” (Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593).

The background to the dispute is complicated and involved various restructurings, licence agreements and assignments between the parties. In 2017 Bega bought the peanut butter business and associated assets and goodwill from Mondelez Australia (Foods) Ltd, a subsidiary within the global Kraft Foods group. After the sale was concluded Kraft temporarily exited the peanut butter market in Australia. Subsequently Kraft returned and wanted to continue to use the distinctive colours and get up previously used for Kraft branded peanut butter products, as depicted below.

However, after closing off the deal between Bega and Mondelez, Bega had commenced selling Bega branded peanut butter products using a trade dress that Kraft claimed constituted misleading and deceptive conduct, breach of contract, passing off and trade mark infringement. Bega countersued and alleged that Kraft had infringed their intellectual property rights and engaged in misleading and deceptive conduct. Bega claimed that as part of the deal with Mondelez, Bega had bought the right to use the distinctive trade dress, including the goodwill associated with it. Bega’s peanut butter jars are shown below.
 

                                                                                                   
On 1 May 2019 the Federal Court ruled in favour of Bega, finding that it had the right to use the distinctive peanut butter trade dress. The Court confirmed that the sale or licensing of unregistered trade marks is not possible without assigning the underlying goodwill of the business. It came to the conclusion that Bega had acquired all rights to the peanut butter trade dress, including the underlying goodwill, and could continue using it in relation to its peanut butter. The Court also awarded damages against Kraft/Heinz for infringing Bega’s intellectual property.

A key factor in the Court’s decision was the fact that the trade dress previously owned by Kraft could have been protected as a registered trade mark but it had never in fact been registered. The Court fight between Bega and Kraft could likely have been avoided if a registered trade mark had been obtained. Instead, both sides had to go to Court to try prove that they had exclusive rights to the use of the unregistered trade mark.

Benefit of registering trade marks

The case is a timely reminder of the value of a registered trade mark.  If Kraft had registered the distinctive Kraft peanut butter trade dress as a trade mark it would have been in a much stronger position to retain rights in its intellectual property.

In addition to trade dress, trade marks can also be a shape (the Coca Cola bottle), a colour (purple for Cadbury chocolates or the orange colour of Veuve Clicquot’s champagne), a sound (the Nokia ring tone) and even a scent (eucalyptus scented golf tees).

Colour, shape, lids, jars and trade dress are important features and should be protected as registered trade marks.

The best protection by far is to register the trade mark under the Trade Marks Act 1995 (Cth). This solution is low cost, and results in an Australia-wide, potentially perpetual, statutory monopoly in the brand. Also, once a mark is registered, enforcement is relatively simple as you don’t need to prove title.

A search of the trade mark register shows that Bega has now filed two trade mark applications to protect the trade dress in the smooth and crunchy versions of the peanut butter.

                                                                                                                      
  
For further information on how these changes may impact on your business please contact Madeleen Rousseau, Special Counsel, on +61 8 9481 2040 or madeleen.rousseau@whlaw.com.au.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

Philip Morris Ordered to Pay Australia’s Legal Costs After Failing to Challenge Plain Packaging Laws

The Permanent Court of Arbitration has recently ordered tobacco company Philip Morris to pay the Australian government’s costs, after Philip Morris failed to get the Australian government’s plain packaging legislation overturned. For the uninitiated, the makes it mandatory for tobacco companies that wish to conduct business in Australia to sell their products using only a generic drab dark packaging. The legislation requires tobacco packaging to feature large, visually-arresting health warnings which are designed to make cigarettes unappealing to smokers.

The plain packaging legislation was opposed by tobacco companies and various countries. One rationale was that the mandatory use of plain packaging make it difficult, if not impossible, for brand owners to market their products using unique marks and design elements. The law also makes it that much more difficult for tobacco companies to protect their trade marks, as the plain packaging makes it that much easier for counterfeiters to produce and profit off fake products. It was also argued that any meaningful public health effects brought by the plain packaging law will be negated if cheap counterfeit tobacco products flood the Australian market.

This arbitration was brought on slightly different grounds. When Philip Morris took the case to the Permanent Court of Arbitration, it tried to argue that a ban on trade marks will breach foreign investment provisions, citing the conditions of a 1993 trade agreement between Australia and Hong Kong to support its argument. The court was very critical of Philip Morris’ arguments, and ruled against the tobacco company.

The Permanent Court of Arbitration’s ruling against Phillip Morris marks the third failure of the tobacco industry’s battle against the Tobacco Plain Packaging Act, after its previous failures to overturn the legislation at the High Court of Australia and the World Trade Organisation (WTO.)

The final costs figure that Philip Morris has been ordered to pay consist of the court fees and expenses, including the cost of expert witnesses, travel, solicitors, and counsel, as well as interest. The actual amount is redacted from the Permanent Court of Arbitration’s new ruling. But former Australian Federal Treasurer Wayne Swan (who helped draft the plain-packaging laws and was called by Australia to give evidence during secret hearings in 2015) estimates the case cost to have been “around $50 million” in legal fees.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

Curvy Edges and a Credible Expert Witness: Apple Inc [2017] ADO 4 (16 May 2017)

On 8 March 2013, Apple, Inc (the Owner) filed a registration application under the Designs Act 2003 (Cth) (“the Act”) for an “Input mechanism for an earphone” (the Design). The Design was entered on the Register of Designs on 27 June 2013 and had a priority date of 8 September 2012.

Examination of the Design was requested on 25 July 2013. Several examples of prior art that were similar or related to the Design were then raised by the examiner. The earliest example was United States design patent number D597071 (the Earlier Design), called an “Input Mechanism” and had a publication date of 28 July 2009. The Earlier Design relates to an in-line controller used for a set of earphones, which is placed along an earphone cable and used to control various functions such as volume, starting or pausing a music player, and answering phone calls.

In Australia, a design must be found to be both “new” and “distinctive” upon comparison with the prior art base for the design as it existed before the priority date. This can include designs that were published in a document anywhere. Here, the Design was considered as “new” because it is not identical to the Earlier Design. The question then is whether the Design can be considered “distinctive” under s 16(1) of the Act.

As the Design Registrar’s delegate noted:

6.Section 16(2) of the Act states that a design ‘is ‘distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base’. Section 19 of the Act goes into more detail, by setting out the factors to be considered when assessing substantial similarity in overall impression. More weight is to be given to similarities between the Design and the prior art than to differences between them [4] I must also:

• have regard to the state of development of the prior art base for the Design[5]
• where only part of the Design is substantially similar to an example of prior art, have regard to the amount, quality and importance of that part in the context of the design as a whole,[6] and
• have regard to the freedom of the creators of the Design to innovate

Apple submitted that there is a distinction between “in-line controllers that are placed at the junction between the cable running to the device and to the two earphones” and “in-line controllers that sit along one of the ear phone cables (therefore having only two cable holes).” This was supported by a declaration from freelance tech journalist and MacWorld Australia editor Anthony Caruana. The hearing officer agreed with this distinction. (Apple also provided declarations from two other patent attorneys from their representatives’ firm.) The hearing officer noted, “11.Mr Caruana is presented as an expert witness, having been a freelance journalist and publication editor in the field of information technology for over 10 years. He has also personally owned and used a variety of earphones for mobile phones from several different sources, including from the Owner.” As it turned out, his evidence went a long way.

The evidence filed in the lead up to the hearing included an extensive search of the prior art base on Google Images as well as prior art searches on design patents in the United States of America, covering the period of 7 September 2007 to 7 September 2012. The results revealed a “very well developed prior art base” (to quote the hearing officer), with a substantial amount of variations on the overall form of an in-line earphone controller. A person familiar with in-line earphone controllers at the relevant date will have enough familiarity to note smaller differences in designs.

The art found in the search results as well as Mr Caruana’s declaration point to the following visual features common in the prior art base for the products related to the Design:

• An overall diameter close to the gauge of the cable
• A cylindrical or rectangular overall
• shape, in order to ‘look as much like the cable as possible’
• The appearance of being integrated into the cable
• Colouring similar to the cable

Mr Caruana also includes the following visual features as a way of distinguishing between designs:

• The number of buttons on the controller (related to the degree of functionality)
• The shape(s) and labelling of button(s)
• Colour
• The shape of the housing

The hearing officer noted that there are no visible buttons on the Design or the Earlier Design, but accepted that there are concealed buttons because the search results indicate that users can interact with three areas by applying pressure to points on the controller. Evidence as to “colour” was considered as irrelevant given the comparison involved line drawings.

When it comes to side-by-side comparison of the Design and the Earlier Design, the hearing officer was of the view that there are several areas of apparent similarity, but they are only to a small degree and unlikely to be noticed by the informed user. The configuration of the buttons and, to a certain degree, their shapes, are significant enough to be noticed by an informed user, but the side by side comparison shows that there are points of difference in the Design and the Earlier Design in both fact and number. The hearing officer noted in his conclusion around distinctiveness:

“30.There remains one area of similarity which carries significance: the configuration of the buttons and, to a certain degree, their shapes. While this is no doubt an important area of similarity for a user, there are points of difference significant both in fact and in number. 31.Mr Caruana’s point that overall shape of the housing is typically used by people familiar with the product to differentiate between designs in the market finds support in the review of the Design which is annexed to Schinella. This article states ‘what has changed is the inline-remote and mic, which is now roughly 25 percent larger with curvier edges.’ It is these curvy edges that stand counter to the similarity in the arrangement of the buttons. This is apparent in all representations, but is most dramatic in the perspective and end views. This curvature effects not only every edge, but transforms the end from a right-angled cylinder shape in the Earlier Design to the softer curved end of the Design. Through this, the housing appears as though it is made from two pieces instead of four.”

Ultimately, despite the number of similarities (which as per s 19(1) of the Act must be given greater weight than the differences), the hearing officer was convinced that the overall impression of the Earlier Design and the Design is that they are not substantially similar and that there are no grounds for revocation. As a result, the examination has been completed and a certificate of examination has been issued. This was a good result for Apple, assisted by a competent expert witness.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

OECD/EUIPO Report Reveals Important Details About Most Common Counterfeit Trade Routes

The European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Co-operation and Development (OECD) has recently published a new report titled “Mapping the Real Routes of Trade in Fake Goods.” The report uses data collected from 10 different industries, notably ones that span a wide range of IP-intense, tradable goods such as foodstuffs, cosmetics, and B2B products such as computer chips and spare parts.

According to the report, the combined trade of fakes in these sectors alone make up more than half of the total estimated trade in fake goods. The aim of the report was to make sense of the complex routes that are commonly used in the global trade of counterfeit and pirated goods.

The report finds that trading in counterfeit and pirated goods has grown rapidly in the past few years in both scope and magnitude. Always deeply problematic for manufacturing businesses (and in the case of pharmaceuticals, aircraft parts and car parts, potentially lethal because of their inferior quality) EUIPO and the OECD now conclude that counterfeits have extremely negative consequences for economies and society. Remarkably, the report concludes that systemic counterfeiting erodes the rule of law and affects citizens’ trust in their government, which can pose a threat to political stability.

The report notes that those entities which engage in the trade of counterfeit products have developed to the point of having their own systems and protocols. Accordingly, these players use complex routes with intermediary points when shipping their infringing products. The report reveals that these intermediary points have several purposes:

A.) to facilitate falsification of documents in ways that camouflage the original point of departure;

B.) to establish distribution centres for counterfeit and pirated goods, and

C.) to repackage or re-label goods.

A key finding is that local enforcement authorities may attempt to stop the importation of counterfeit goods, but will be unable to intercept goods in transit because of extra-jurisdictional limitations on their powers.

Most Common Routes and Regions in the Counterfeit Trade

Out of the ten sectors that were analysed, nine of them have China as the largest producer of counterfeit goods. This is not news: despite Chinese authorities active efforts to assist foreign IP rights owners, the size of Chinese industry makes this very problematic. The most common locations being used as key transit points include the UAE, Saudi Arabia, and Yemen, which are used for transporting counterfeit products to Africa. Counterfeit products bound for the European Union are more likely to pass through Albania, Egypt, Morocco, and Ukraine. When it comes to fakes bound for the United States, the most common transit point is Panama.

The report states that smaller items that consist of ten or fewer items are usually transported through courier services and regular post, and that these small shipments together make up more than 43% of all counterfeit goods shipped in 2013.

The report notes that data collection is crucial when it comes to policy discussions between individual governments or discussions at a regional level. Finally, the report calls for more in-depth analysis for the development of efficient enforcement and gorvernance frameworks in the role of free trade zones in transhipments, a closer look at the detection problem posed by small shipments, and a deeper probe into the economic features of provenance economies, including the quantitative relationship between the intensities of counterfeiting and indices of free trade, quality of governance, and public sector integrity.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

The Concept of “Careful Purchasers” Strikes Again: Basler Electric Company v BOGE Elastmetall GmbH [2017] ATMO 64 (30 June 2017)

On 17 November 2014, motor and vehicle parts manufacturer BOGE Elastmetall GmbH (the Holder) applied for a trade mark in Australia, relying upon an extension of protection based upon international registration no. 1227675 (“the IRDA”). This was an image mark consisting of a stylised letter “B” (the company’s logo) inside a black rectangle. The mark’s specifications include Class 7, 9, 12, 16 goods in relation to various automotive and office supplies, as well as Class 35, 38, and 41 services relating to advertising, telecommunications, computer programs, and various training services. Here is an image of the logo:

The application was opposed on 4 May 2015 by Basler Electric Company (the Opponent), relying upon sections 42, 58, and 60 of the Trade Marks Act as grounds for opposition. (Sections 59 and 62A were also submitted as grounds for opposition, but the Opponent did not make any submissions about these.)

The Opponent submitted that three of their trade marks, unregistered in Australia but which the Opponent claimed to have been in active use in Australia prior to the IRDA’s filing date:

The s 60 ground was dismissed, as the Opponent failed to establish any evidence of actual confusion arising in Australia (or elsewhere, for that matter), between the Opponent and the Holder’s respective marks. At least in part, the evidence let the Opponent down. As the hearing officer notes:

“19.I am not satisfied that the requisite reputation has been established. The evidence in Linklater is limited to the assertions of the amount of advertising, without any supporting documentation to show how it was effected and the particular sums involved. Likewise Steinacher deposes to catalogues being produced and distributed; however, there are no details as to the number distributed, how or to whom they were distributed.”

But also, the products are not fast moving consumer goods. “20.Even if the requisite reputation had been established I am not satisfied that there would be a real tangible danger of confusion or deception. The Opponent’s goods are expensive and specialized electricity generation control products used in electricity generation and distribution. These products are entirely unrelated to the goods and services covered in the IRDA, being primarily vehicle components and associated services. 21.I consider that because of the relative expense of the products of both parties and their specialisms, they would be purchased after extensive research and due consideration and are not the kind of goods that might be purchased on impulse or in a hurry.”

This reasoning echoes other decisions around casual purchases and thoughtful purchases:

a. Linecrest Pty Ltd v Cobannah Holdings Pty Ltd as trustee for the Lollymania Trust [2013] ATMO 2 (9 January 2013), where the hearing officer noted, “The goods are of such a price and nature that not much time, care, or attention is devoted to their purchase and it is likely that the goods will be casually inspected prior to purchase and their provenance will be unquestioned. Additionally, the purchase of the goods is likely to be attended a similar press of circumstances as those distractions referred to in Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307. Lockhart J said: “Shoppers in supermarkets are probably not anxious to prolong the agony of wheeling trolleys between rows of food products and avoiding collision with other trolleys, often to the unwelcome accompaniment of clamorous babies, and children impatient to escape from the shop or to buy everything in it except the household needs. I say nothing about attendant spouses who, if husbands, wait in varying degrees of impatience to perform their function as beasts of burden. Shoppers are probably inclined to select their goods quickly.”

b. Prefel SA v Merchant Corporation (2001) ATMO 31: “My attention must also be given to the circumstances of trade likely to surround use of those trade marks on the specified goods. It seems to me the goods, which are clothing, are for the most part unlikely to be ordered by telephone or over a counter by the spoken word. I am aware that neither set of goods is limited to high cost items. Nevertheless, I think it is likely, in most situations, the goods will be sold in a manner which affords the potential purchaser an opportunity for careful inspection and comparison with other similar goods. Under such circumstances, the visual impact of the respective marks is likely to be of considerable importance – as per Taiwan Yamani Inc v Giorgio Armani S.p.A. (1990) AIPC 90-644.”

Specialist markets are different from markets for fast-moving consumer goods. In Bausch & Lomb Inc v Registrar of Trade Marks (1980) 28 ALR 537 Lee J held that where a trade mark is used on a specialised product the enquiry should be directed to the section of the community following the particular pursuit or possessing the special vocational or technical interest. In that decision, His Honour said:

“In my view one must approach the matter not as a layman with the loose knowledge to which I have referred, but from the point of view of how the word would be accepted amongst those who in fact distinguish the lens of one manufacturer from that of another by reference to a trade name, and in this case these are in the main the specialists in the field of eye care and to a lesser extent their patients.”

In Line 6 Inc v Apple, Inc [2009] ATMO 9 (29 January 2009) at para 42, evidence failed the opponent but the hearing officer noted:

“I have no doubt that the opponent’s goods have established a reputation in Australia within the musical industry – amongst players of electric guitars in particular. While the evidence does not show particularly strong sales the marketplace in not particularly large and the participants in the musical industry are generally well informed about the products available to them to enable them to perform.”

In Maxims Caterers Limited v Magnona Pty Ltd [2009] ATMO 98 (2 December 2009) the hearting officer noted, “The production and sale of moon cakes, especially under a trade mark consisting entirely of Chinese characters, indicates a niche market. “

In L.F.P Inc v Supre Pty Ltd [2005] ATMO 31 (24 June 2005) at [30] the hearing officer said, “The opponent’s goods cater for a niche market. They are advertised for sale in the opponent’s HUSTLER magazine and via the opponent’s pornographic websites and thus exposure to the purchasing public is more limited than it would be if the goods were advertised and promoted via more conventional channels…. At [20] I consider that within the niche market where goods of this nature are bought and sold the opponent has achieved a reputation such that consumers would be likely to be deceived or confused if the applicant were to use its trade mark.”

And in Spiral Foods v Valio Pty Ltd [2000] ATMO 22 (15 March 2000), the hearing officer said, “The goods on which the trade marks have been used include wheat free soy sauce, soy sauce, teriyaki sauce, yuzu ponzu, low salt soy sauce, mirin, brown rice vinegar, plum vinegar, sesame oil, miso, sea vegetables, various teas, instant miso soup, various pickles and condiments, Japanese snack foods, rice, sesame and vegetable crackers, soy milk, rice wafers, olives, olive oil and various types of noodles. …I will simply remark that they demonstrate a generally increasing trend and, for a small company, sales are substantial within what is obviously a niche market.”

None of these decisions were cited by the hearing officer in this matter, but the decision follows the same line of reasoning. If the goods in the application are goods provided to a niche market, there will be significant difficulty in successfully opposing the application unless evidence demonstrates otherwise.

(In addition, the section 42 ground failed as the hearing officer was not convinced that the marks substantially similar. Had the Opponent proved that one of their trade marks bore a substantial similarity to the IRDA, it might have argued that they are the first one to use the mark in the country in the course of trade. But as the hearing officer found no similarities between their marks and the IRDA, it follows that the Holder is the first one to have used the mark in Australia and therefore its owner. The s58 ground failed as well, and since no submissions were made for the other grounds (s 59 and 62A), the IRDA has been allowed to proceed to protection one month from the date of the decision.)

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