Trade Mark & Branding Registration, Strategy & Enforcement

Who owns Neptune’s fork?: Trident Seafoods Corporation v Trident Foods Pty Limited [2017] ATMO 39 (3 May 2017)

A trident, the indicia of the Poseidon, Greek god of the sea (or Neptune for those of a preference for Roman mythology), is one of those valuable symbols which are highly suggestive of marine or maritime goods and services, but which is not descriptive. It is valuable real estate from a marketing perspective. It is entirely unsurprising that there has been an ongoing trade mark-based argument in Australia over the word “TRIDENT” in respect of seafood.

On 18 July 2014, Trident Foods Pty Limited (the Applicant) filed an Australian trade mark application for the trade mark “TRIDENT” under classes 29 and 30 goods covering various coconut and fish-related food products and condiments. The application was subsequently opposed by Trident Seafoods Corporation (the Opponent), nominating numerous grounds of opposition, but ultimately focusing only on ss 44 and 59 during the hearing.

This was the second decision to arise from a trade mark opposition between these two parties. The previous dispute related to three non-use applications – see Trident Seafoods Corporation v Trident Foods Pty Ltd [2016] ATMO 45 (30 June 2016). In that matter, two of the Removal Opponent’s trade marks were left on the Registrar. This was as a consequence of the Registrar’s delegate exercising a discretion to do so because, amongst other things, the removal opponent had not on the evidence abandoned two of the three registrations under attack.

That partially successful removal application, we assume, invited this opposition.

Deceptive Similarity Ground

Under their s44 ground of opposition, the Opponent relied upon its registered trade mark 1555536 (the Trident Seafoods mark), which had a filing date of 7 May 2013. It consists of the following logo , and covers class 29 goods as it pertains to various seafood and fish oil products.

The hearing officer noted, “ 17.I agree with the opponent that the trade marks are deceptively similar. The essential and striking element in the Trident Seafoods mark is the word TRIDENT which is presented in large text with graphic devices namely a trident and ocean waves which only serve to emphasis the word TRIDENT in the consumers mind. The Trade Mark is the word TRIDENT solus. Thus, I am satisfied that the trade marks are deceptively similar, that they cover the same goods and goods of the same description and that the Trident Seafoods mark has an earlier priority date than the Trade Mark.”

But the Applicant argued that it had been varying the range of goods that the Trident mark is being used on, in order to re-invigorate the Trade Mark. This had been ongoing since 2000. While the Applicant had only used the TRIDENT mark in relation to fish and fish products since October 2014, there is no set time period for which use of the trade mark must be demonstrated.

The Applicant also drew the hearing officer’s attention to two earlier Australian trade mark registrations, 266625 and 400953, for substantially identical trade marks. The applicant had a long history of use of its trade mark on various edible foods ranging from Asian sauces, noodles and coconut cream to smoked oysters and tinned tuna which collectively resulted in significant sales figures across Australia each year. The Applicant also presented proof that it had spent time and money into defending their trade mark before both IP Australia and in court. That was enough for the delegate. The s44 ground of opposition failed.

The interesting aspect of the decision was that the hearing officer recognised a marketing strategy of innovation and flexibility in the market offering as a relevant consideration: “ 23.The applicant has used its Trade Mark on the relevant goods and while there may appear to be a gap in production, Mr McIntosh makes the point that since there is continuous innovation and development of new products the range of food products offered under the Trade Mark evolves to take into account changing consumer demands. I note that this is not an unusual practice in the marketplace where the tastes of the public can change and demand in products can rise and fall depending on those tastes and current cuisine fads, not to mention how the demands of manufacture may alter due to supply etc.”

That is, with respect, a very commercial and practical approach to the issue of use. The nature of “use” by a business endeavouring to sustain or increase market share, as consumers’ wants and needs change, should not be set in stone.

No Intention to Use

The Opponent also argued that the Applicant had no intention to use the Trade Mark on the relevant goods, and that the intention of the Applicant is “an ongoing intention not limited by the state of mind at the time of filing the application.” This is an interesting argument because it was supported by the Applicant’s evidence, but the delegate did not agree. This argument was tantamount to requesting the delegate to make “a lot of inferences on the basis of timing of the applicant’s re-release of its fish products after a period of inactivity.” Again, commercial flexibility prevailed.

Also, the evidence demonstrating the applicant’s lack of intention to use the Trade Mark in good faith at the time of filing was found to be “lacking”. Instead, there was ample proof that the Applicant had used the Trade Mark on the relevant goods and is using the Trade Mark on the relevant goods. While the delegate acknowledged that the Applicant’s sale of tinned fish products during a certain period was of such a small scale so as to encourage the Opponent to argue that this was not genuine commercial use, there is insufficient evidence to support such an argument. Thus, the s59 ground for opposition also failed.

With the Opponent unable to establish any of their grounds of opposition, the application has been allowed to proceed to registration, barring any appeal.

Poseidon was a cranky deity, and was also the god responsible for earthquakes. There is not anything especially earth-shattering about this decision. But it is commendable for its understanding of how businesses adapt and are responsive to the market.

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.

Trade marks and graphic design: the bear trap of industry themes

One consideration for graphic designers upon receipt of a brief to design a new brand identity is to mitigate the risk of confusion between a client’s brand and competitors’ brands.

There is a tension between this, and rendering a logo so that it looks like it falls into a particular category of goods and services.

But how problematic is this? Below are some logos, all from the financial services sector:

(Source: Per Mollerup, Marks of Excellence, Phaidon Books, 1997)

This series of logos starts to look like an marketing communications expression of corporate kinship: variations of a logo to denote different services or operational divisions of the same entity.

But, running from left to right by row, these logos are each owned by competitors:

a. Chase Manhattan, USA

b. Jyske Bank, Denmark

c. Bankers Trust, USA

d. Development Cooperative Bank, India

e. National West Minister Bank, UK

f. Sao Paolo Development Bank, Brazil

g. Dresdner Bank, Germany

h. Senbank, South Korea

Since 1997, things have not changed much:

a. – a logo filed by White & Partners, Australia, on 2 December 2016

b. – a logo filed by Bank of Queensland, Australia, on 10 June 2014

c. – a logo filed by American Express Marketing and Development Corp., USA, on 9 September 2010

d. – the logo of Chicago Mercantile Exchange Inc, filed 20 20 July 2012

e. – the logo filed by Loan Market Group Pty Ltd, Australia, on 14 May 2014.

(“Filed” in this instance means filed with the Australian Trade Mark Registry.)

The brand consultant’s brief might be to create a logo which looks like it would fit in with notable peers. But, in addition to being lost in the fog of competing brands, this approach also creates a real risk of confusion, particularly amongst consumers who might rely upon the logo only (an issue particular to markets or jurisdictions where Latin characters are not so familiar to consumers). Mitigating the risk of a trade mark dispute between brand owners over similar logos should be a proper consideration for a graphic designer.

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.

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.

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.

Fishing for Phishers: Recent UDRPs brought by the UK Commissioners for HM Revenue and Customs

Phishing, the fraudulent act of soliciting money from members of the public through emailed demands, is a scourge, in which phishers deceive especially the elderly or naive.

On 22 February 2017, the Commissioners for Her Majesty’s Revenue and Customs of London (the Complainants) filed a complaint at the WIPO Arbitration and Mediation Center over the domain name HMRCONLINEGOV.COM, which has been registered with Network Solutions, LLC under the name of Dani Gan (the Respondent) of Allambie Heights, in New South Wales, Australia. The domain was registered on 2 October 2016, but had not been used and at the time of the complaint, only redirected visitors to a web page containing references to the Complainant and other websites.

As the decision notes, “The Commissioners for HM Revenue and Customs, is a non-ministerial department of the United Kingdom Government responsible for the collection of taxes, the payment of some forms of state support and the administration of other regulatory regimes.” It operates a website located at hmrc.gov.uk

This sort of domain name policing activity by government agencies (and also financial institutions) responsible for dealing with the public’s finances is important. As noted in another, separate UDRP complaint brought by HMRC:

“Complainant is accountable for safeguarding the flow of money to the Exchequer through its collection, compliance and enforcement activities and ensures that money is available to fund the UK’s public services. Complainant also administers statutory payments within the UK, such as statutory sick pay and statutory maternity pay and it helps families and individuals with targeted financial support through the payment of tax credits. Almost every UK individual and business is a direct customer of Complainant.”

The very useful website www.udrpsearch.com indicates that HMRC has three active UDRP complaints against various individuals, was successful in another six, and terminated one. (One of those individuals noted that his or her name was the subject of identity theft, and that name was redacted from the decision.) Thee active cases are for the following domain names:

• hmrc-tax-service.com, service-hmrc-tax.com, tax-hmrc-service.com (D2017-1492)
• taxreturn-hmrc.com, taxreturnhmrc.com (D2017-1333)
• refund-tax-hm-rc.com (D2017-1312)

The outcome of these three UDRP complaints remains to be seen. But by pressing on with UDRPs against recidivist cybersquatters, such as the famous Cameron Jackson (who has been involved in fifty-five domain UDRPs as the respondent), complainants assist future complainants by collectively building a body of evidence of systemic cybersquatting.

In respect of the UDRP complaint issued in respect of Mr Gan, the Complainants tried to contact the Respondent on 12 January 2017 by way of a letter demanding the transfer of the domain name. This was met with silence. Another letter was dispatched on 19 January 2017, but this second attempt at correspondence also solicited no reply from the Respondent.

As noted in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), the failure of the Respondent to reply does not necessarily result in a default in favor of the Complainant. The onus is still on the Complainant to satisfy the three requirements outlined in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, namely a.) the disputed domain name is identical or confusingly similar to a trade mark or service mark to which the Complainant has rights, b.) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and c.) the disputed domain name has been registered and is being used in bad faith.

Under the first requirement, the Complainant filed evidence of a trade mark registration for the HMRC name in the UK, which had a priority date of March 2008. This was a prudent action for the Complainant to have taken, and one often overlooked by government entities: a trade mark is prima facie evidence of rights in a brand, and government departments should plan for an eventuality where a trade mark certificate will help when other arguments around goodwill might be tricky. (The decision does not identify it, but the trade mark has the registration number UK00002471470.) But also in support of this argument that the first element of a UDRP complaint was fulfilled, the Complainant also provided proof that third parties in the UK and other jurisdictions commonly refer to theComplainants as, simply, “HMRC”.

With ownership of “HMRC” established, the Complaint argued that the disputed domain name is confusingly similar to “HMRC”, as the words “online” and “gov” are not enough to distinguish the domain name from the Complainant’s HMRC mark. Obviously, these sorts of ancillary, descriptive terms merely suggest that the domain name is an official and/or online presence for the Complainant’s services.The arbitrator agreed.

The Complainant was also successful in the second requirement, that the Respondent had no rights or entitlement to the domain. With the Respondent making no effort to defend himself and his continued use of the disputed domain name even after the two cease and desist letters, the Panel adopted the view that the Respondent did not have any legitimate purpose for its registration, except to commercially exploit the Complainant’s HMRC mark.

The third requirement, that the Respondent’s registration of the disputed domain name was done in bad faith, was also found in favour of the Complainants. The disputed domain name fully incorporates the Complainant’s mark and the terms “online” and “gov,” presumably as a way of confusing consumers into thinking that the disputed domain name is connected to the Complainant. This was supported by evidence that links contained on the webpage resolving from the disputed domain name pointed visitors to various business:

“…it appears that Respondent has placed, or allowed to be placed, a web page at the disputed domain name that includes click-through advertising concerning Complainant, its services, income tax filing, pensions and government insurance. As Respondent has chosen not to respond in this proceeding, the Panel can only conclude, based on the available evidence, that Respondent did not register the disputed domain name for any legitimate purpose, but actively sought to capitalize on Complainant’s HMRC mark by registering a domain name that would likely be seen as related to Complainant or Complainant’s services…. the evidence suggests that Respondent specifically targeted Complainant and its HMRC mark, and did so opportunistically and in bad faith.”

People who received email demands for payments of even small sums from a website with the address “HMRCOnlineGov.com” would be forgiven for thinking that they had outstanding tax payments. The Complainant alleged that the disputed domain name had been used for fraudulent activity through phishing scams, but the Panel was unable to determine whether there has been use of the disputed domain name for fraud due to the limited amount of evidence submitted. It ultimately did not matter in so far as this domain name dispute was concerned. The Complainant was successful in establishing the three requirements outlined in paragraph 4(a) of the UDRP. The disputed domain name HMRCONLINEGOV.COM was ordered by way of the UDRP process to be transferred to the Complainant.

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.

Limitations on the Prior Use Defence: Cabcharge Australia Limited v E2 Interactive [2017] ATMO 76 (28 July 2017)

On 30 August 2011, e2Interactive Inc. (the Applicant) filed a trade mark registration application for the following logo (the Trade Mark), covering a wide variety of products and services under classes 9, 35, 36, 38, 40, and 41, but mostly in relation to cards, communication, entertainment, and marketing/advertising. The application was initially rejected after examination revealed possible grounds for rejection under s 44, but the Applicant was able to provide evidence of prior use and the Trade Mark was advertised for possible registration. The Applicant engaged in the very Australian practice of drafting a trade mark application with a very wide specification. The Applicant’s trade mark included material for which it did not have evidence of use, but further, to which it seems unlikely to have ever wanted to applied the trade mark.

This opposition had been a long time coming. The proceedings commenced prior to the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and accordingly, those amendments did not apply to this matter.

The application was opposed by Cabcharge Australia Limited (the Opponent.) Adopting the classic “scattergun” approach to drafting notices of opposition, the Opponent initially relied upon most of the grounds of opposition available under the Act, but later advised that it would focus only upon the ss 42(b), 44, 60, and 62(b) grounds.

As part of its evidence, the Opponent drew the hearing officer’s attention to pending trade mark No. 1390374 (“FASTCARD”) and the recently registered trade mark1416896, for “CABCHARGE FASTCARD.” Both trade marks cover goods and services in relation to various printed matter, electronic funds transfer, and taxi services that utilise electronic funds transfer.

The usual point of difference between s44 and s60 of the Act came into play. Under s 44 of the Act, the respective marks must be considered as being in “notional use” in relation to all of the goods or services covered by the application(s) or registration(s) under comparison, whether or not such use has actually taken place. Under s 60, however, it is the actual past use enjoyed by the mark(s) relied on by an opponent which matters and not any abstract concept of notional use. In furtherance of this, the Opponent also provided evidence of extensive marketing and advertising using its “FASTCARD” trade mark, as well as proof of substantial revenue from the period of 2010 to 2013. But the revenue attributed to just the case of the mark “FASTCARD” was not separated out from other revenue. The Hearing Officer noted this. This led to the failure of the s60 ground. (The 42(b) and 62(b) grounds similarly failed.)

The outcome then hinged on s 44, and deceptive similarity. Upon noting that an average consumer has a general awareness of traders’ tendency to update their branding over time (unfortunately, with this very interesting concept confined only to a single line within a single paragraph), the Hearing Officer found deceptive similarity between the Applicant and the Opponent’s trade marks:

“In my opinion the word ‘Fastcard’ is a memorable, essential and distinguishing feature of the Trade Mark and also of both the Opponent’s trade marks. It is likely that deception or confusion could occur through contextual confusion whereby the word ‘Fastcard’, the common and memorable element in each of the respective trade marks, may induce traders and the public to believe that the trade marks emanate from the same trade source.”

With deceptive similarity established, the next issue was prior use as a defence. The Applicant submitted proof of individual agreements and presentations with nineteen partners for their cards or technology that bear the trade mark. The earliest of these was a presentation entitled “InComm Executive Overview” and “InComm Overview” which were made to two retailers in May 2010, which contain images of the prepaid cards bearing their trade mark. Other evidence included copies of email between the Applicant and other Australian retailers dated August 2010, and contain attached images of prepaid cards, some of which bear the applied-for trade mark. Other evidence included a copy of a full page advertisement which appeared in the Xbox 360 Magazine and the GameInformer Magazine in December 2010. The advertisement contained images of seven prepaid cards, some of which also evidenced use of the trade. But despite the strong evidence showing prior use within the context of prepaid cards that bear the Trade Mark as early as 22 September 2010, the Hearing Officer clarified that it only satisfiedprior use in relation to a narrow specification of the goods and services claimed, namely Class 9 and Class 36.

At best, the Applicant had fourteen months of use in Australia prior to the relevant date, only some of which was concurrent with the Opponent. With no sales figures or advertising spend evidence to support the short period of concurrent use, the Hearing Officer considered the prior use defence only partially established. As such, the Applicant’s Trade Mark proceeded to registration with protection for only limited goods and services.

The order relating to the costs of the application was that each party was to bear its own costs. This is because of the following: “83.On 10 July 2017 I informed the Applicant’s representative that it was my intention to refuse to register the Trade Mark unless the specification was refined in classes 9 and 36 in accordance with the evidence of prior use and that the remaining conflicting goods and services were deleted. On 27 July 2017 the Applicant agreed to these amendments.” The suggestion is that if, perhaps, the Applicant had done this much earlier in the piece to the opposition hearing might have been avoided.

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.

Like a Boss: Crossfit Inc v Bossfit Pty Ltd [2017] ATMO 74 (24 July 2017)

CrossFit, an entirely too vigorous regime of exercise as far as we are concerned, is an international fitness business with many adherents across the world and in Australia. As the evidence in this matter noted,

“[The Opponent] licences the CrossFit mark to affiliates throughout the world, and there are now approximately 12,836 gyms providing specialised services under the CrossFit mark throughout the world, and 601 of those gyms are based in Australia. There are approximately 116,381 certified CrossFit trainers throughout the world, and 5,869 of those trainers are based in Australia.”

When health club and fitness training services provider Bossfit Pty Ltd (the Applicant) filed a trade mark registration application for the name “BossFit” under Class 41 services, the application was opposed by Crossfit Inc (the Opponent) using the typical “scattergun” grounds for opposition, including ss 42, 44, 58, 60, and 62A ofthe Trade Marks Act 1990. The Opponent provided evidence of a number of its registered “Crossfit” trade marks, all of which are covered under health and fitness-related goods and services.

The interesting aspect of this case is to do with one of the grounds – s44. When assessing the issue of whether the Applicant and the Opponent’s trade marks are substantially identical, the hearing officer noted that the Applicant’s trade mark begins with the word “Boss” while the Opponent’s prefix is the word “Cross.”

The Applicant had a good explanation for the use of the word “BOSS”, as set out in a declaration which intermingled evidence with opinion and legal submissions (we note the rules of evidence do not apply in this forum):

‘BossFit’ as a brand was conceived and launched as an invented word in September 2012 by or on behalf of the Applicant to promote health and fitness, initially to the local Brisbane community.

The BossFit brand was inspired by a love of extreme sports, functional fitness, popular Facebook page Boss Hunting … and popular phrase ‘Like a Boss’, a catchphrase often used in memes that feature a person completing an action with authority and finesse.

The two core design concepts of the BossFit brand are ‘bossness’ and physical fitness. …:

The words ‘Boss’ and ‘Cross’ have completely different natural meanings and convey completely different concepts and the two words ‘Boss’ and ‘CROSS’ are not substantially identical or deceptively similar either visually or orally.

The BossFit Mark and the CROSSFIT Marks contain the same word suffix, namely, the word ‘FIT’. There are hundreds of trade marks registered in class 41 and associated classes with the word suffix ‘FIT’. …

The Applicant believes that the ‘FIT’ word suffix element could not itself be distinctive of the CROSSFIT Marks.

The Applicant believes that the whole words ‘BossFit’ and ‘CROSSFIT’ naturally convey completely different concepts and meanings, that they are phonetically different and that they are not substantially identical or deceptively similar either visually or orally.

The hearing officer accepted this. The comparison then moved onto determining whether there is deceptive similarity.

While discussing the issue of deceptive similarity, the Opponent submitted in a comparison of the two trade marks, the natural and normal pronunciation should be considered, including “the possibility that a word may be slurred” (not just a peculiarity for Australian accents – the concept has a pedigree dating back to the 1925 case of London Lubricants (1920) Ltd’s Appn 42 RPC 264 ). The Opponent submitted that the only difference between the two trade marks are the letters “CR” at the beginning, which have been replaced by the letter “B”—the substantial part of both trade marks is “OSSFIT.”

The Opponent further argued that phonetically, there is a high degree of similarity between the two trade marks and that deception or confusion is highly likely, given the possibility of imperfect recollection, that a person may be caused to wonder whether BossFit’s services has any relation to the Crossfit trade mark.

The Applicant’s counter argument, delivered through a written submission, is that the dominant or essential elements in the trade marks are the word prefixes, CROSS and BOSS, which have completely different natural meanings and convey different concepts and therefore would not lead to deception or confusion.

The Applicant also advanced the argument that the similar element in both trade marks, FIT, could not by itself be distinctive of the trade marks due as evidenced by the hundreds of trade marks registered in class 41 that bear the same word suffix. The hearing officer agreed with the Applicant’s argument. “The respective trade marks are concatenations of two words, the second of which is ‘FIT’. This element lacks distinctiveness in respect of the relevant services. “ The Applicant’s trade mark has been ordered to proceed to registration. This must be correct: te Opponent is not entitled to assert exclusivity over the suffix “FIT” through the back door.

Relying upon suffixes to advance an opposition is always tricky. In Merial v Virbac [2012] ATMO 83 (25 September 2012), in a comparison between “Fiproline” and “Frontline”., while both marks began with the letter “f”, and ended with the suffix “-line”, they were found not to be deceptively similar. On the other hand, in Pfizer Products Inc v Karam(2006) FCA 166, in a comparison between “VIAGRA” and “HERBAGRA”, the court at [38] and [54] agreed with Pfizer’s submissions:

In my opinion, a substantial number of members of the public would identify herbal medicines used to aid health, vitality and sexuality marketed under the name ‘HERBAGRA’ to be a herbal version of VIAGRA, whether or not from the same source, or connected with VIAGRA because of the pervasive reputation of VIAGRA.:

The argument for Pfizer is that the use of the suffix ‘-AGRA’ will cause the requisite confusion as to whether:

• the HERBAGRA product is out of the same stable as VIAGRA;
• the active ingredient in the HERBAGRA product is that in VIAGRA or is from the same family of ingredients;
• the HERBAGRA product is equivalent to VIAGRA in terms of its effects or achieves similar or related effects.

It seems the suffix must be especially notorious to be the proper foundation for such an argument.

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.

Bye, Innovation Patents (and other news): Australian Productivity Commission – The Federal Government Response

The Australian Federal Government’s response to the controversial Productivity Commission’s Inquiry into Intellectual Property Arrangements was released on Friday.

It deals with the many recommendations made by the Commission. Here are some of the highlights, in so far as they directly affect Australian businesses:

Copyright

• In principle, the government supported the recommendation that restrictions on parallel importations of books be repealed. The government says it “will consult with the book industry to develop a reform pathway that is in the public interest.” This will upset Australian writers and publishers, who fear a flood of cheap imports and an adverse effect upon both the Australian writing industry and Australian culture as embodied in Australian literature.
• The introduction of a fair use exception for copyright went through to the keeper. “This is a complex issue” says the government, and promises to further consult. Fair use has caused a great deal of angst amongst Australian copyright owners. But the American approach is very good. Section 107 of the US Copyright Act sets forth an illustrative list of some types of uses which may qualify as fair use. The list identifies the following: “use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” The list is not intended to be exhaustive – Campbell v Acuff-Rose Music Inc 510 US 569, 577 (1994) (noting the “illustrative and not limitative” function of the examples given). In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:

•  
• The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
• The nature of the copyrighted work
• The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• The effect of the use upon the potential market for or value of the copyrighted work.

Section 107 concludes with the following words: “The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.” The fact that the government did not take a pragmatic approach to this and mirror the pragmatic and flexible US legislation is unfortunate.

• Orphan works: “The Government recognises the difficulties both creators and cultural and collecting institutions face in utilising orphan works. It stifles the ability for knowledge to be shared and new content to be created.” It seems that there will be a limitation of liability where diligent searches to locate the author have failed.
• Collecting societies will be the subject of a further review to promote best practice.

Patents

• The government supported the recommendation to put beyond doubt that the assessment of inventive step in Australia is consistent with the European Patent Office.
• There was a slightly chilly response to the idea of lowering patent fees “to promote broader intellectual property policy objectives, rather than the current primary objective of achieving cost recovery.” The government said, “Current Government policy under the Australian Government Charging Framework is that where specific demand for a government activity is created by clearly identifiable individuals or groups, those individuals should be charged for it wherever possible. Granting of IP rights is clearly within this policy statement, and as a regulatory activity is appropriate for cost recovery.”
• Innovation patents are out. “The Commission found that the majority of SMEs who use the innovation patent system do not obtain value from it, and that the system imposes significant costs on third parties and the broader Australian community.” Given the ease by which innovation patents can be obtained and the significant remedies which accrue to innovation patents, this should be regarded as good news, except for those who used innovation patents for a scarecrow effect. Innovation patents are a cause for confusion, and their abolition is a welcome development.
• Changes to the mechanism of extension of pharmaceutical patents, putting more onus onto patent owners, did not gain any real traction.
• Pay for delay agreements between innovators and generic pharmaceutical companies: The government agreed in principle with the recommendation that “The Australian Government should introduce a system for transparent reporting and monitoring of settlements between originator and generic pharmaceutical companies to detect potential pay for delay agreements.”

Trade Marks

• The government supports the recommendation to reduce the grace period from 5 years to 3 years before new registrations can be challenged for non-use. This will compel trade mark owners to use registered marks, and not stockpile them (a bad habit of the wine sector in particular).
• The government does not support the recommendation to remove the presumption of registrability in assessing whether a trade mark could be misleading or confusing.
• Unravelling some very confusing case law (which, with respect, seemed to run counter to the purpose of the legislation), “The Government supports recommendation (c) to ensure that parallel imports of marked goods do not infringe an Australian registered trade mark when the good has been brought to market elsewhere by the owner or licensee. The Government accepts that section 123 of the Trade Marks Act is not effectively implementing the policy intention of allowing for the parallel importation of legitimate goods and has led to some uncertainty and confusion.”
• The government seems to like an idea of an “intention to use” or “use” statement from new applicants.
• “The Government supports recommendation (e) to routinely challenge trade mark applications that contain contemporary geographical references, but some further work is needed to determine the scope of the practice change in the Trade Marks Office. The Government agrees that geographical terms in trade marks are a particularly contentious issue in relation to misleading and confusing connotations.” This is no surprise given the penchant for European GI regulators to challenge Australian businesses on the use of European GIs applied to Australian goods.
• Finally, some 14 years after the long-forgotten Australian Council on Intellectual Property’s report on the issue, “The Government supports in principle recommendation (f) to link the ATMOSS (now known as Australian Trade Mark Search) database with the business registration portal. The Government agrees that additional assistance for business name applicants would be desirable to help them make informed decisions. The Government is currently working to establish a single online portal for streamlined business and company registration and is continuing to develop Australian Trade Mark Search to provide additional capabilities. Linkages between these databases to better assist and streamline business decision-making are being explored.” This might help fix the enormous confusion amongst SMEs in Australia around the difference between business names and trade marks.

Geographical Indicators

• “The Government supports the recommendation that amendments should be made to the process to omit Australian Geographical Indications (GI). The power granted to individuals to effectively veto an omission of a GI is unnecessary and makes the omissions procedure unworkable in practice.” That amendment to the law would remove much of the angst from the process.
• “The Government does not support the recommendation that amendments should be made to the process to amend Australian GIs.”

Plant Breeder’s Rights

• The government supported the recommendation to amend the Plant Breeder’s Rights Act 1994 (Cth) to enable essentially derived variety (EDV) declarations to be made in respect of any variety.

Section 51(3) of the Competition and Consumer Act

• The government agreed to amend this: not so surprising given the ACCC’s perspective on the section as set out in Australian Law Reform Commission Report 122: “The ACCC considers the uncertainty created by s 51(3) of the Competition and Consumer Act 2010 (Cth) which undermines the capacity of competition law to regulate anti-competitive conduct, including unilateral exercise of market power, to be detrimental to the proper operation of copyright licensing.” The government’s response was, “It is now generally agreed that there is no fundamental conflict between IP rights and competition policy; rather they share the purpose of promoting innovation and enhancing consumer welfare. However, where there is evidence of anti-competitive conduct associated with IP licensing arrangements, it is important that such conduct is appropriately regulated. If anti-competitive conduct in this space is nonetheless in the public interest, authorisation will be available under Part VII of the Competition and Consumer Act.”

Open access to Publicly Funded Research

• Guaranteed to upset many university academics, the government agreed for the need for “an open access policy for publicly funded research. The policy should provide free and open access arrangements for all publications funded by governments, directly or through university funding, within 12 months of publication.”

An IP Court

• The government delivered a mixed response to the idea of a dedicated IP court, noting that the Federal Circuit Court is experimenting with such a model, and that patent matters should be determined by judges with experience in the area.

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 Core of the Pink Lady Trade Mark Dispute: High Court of Australia refuses to revisit Apple and Pear Australia Ltd v Pink Lady America LLC [2016] VSCA 280 (23 November 2016)

In April 2017, the High Court of Australia refused special leave to appeal the decision of the Court of Appeal of the Supreme Court of Victoria. This resolved the long running contractual dispute over the “Pink Lady” trade mark. (It effectively ensures that all use of the “Pink Lady” trade marks used in respect of Chilean-grown apples and fruit that are exported from Chile must first be authorised by Apple & Pear Australia Limited (APAL).)

This story begins in 1973 when Western Australian pomologist John Cripps, employed by the Western Australian government’s Department of Agriculture and Food, crossed two apple varietals, called the Golden Delicious and the Lady Williams, in order to create a new variety that exhibits both apples’ best qualities. The outcome was a juice, sweet apple with a greenish yellow base skin. It has been marketed ever since under the Pink Lady brand (but is also referred to as “Cripps Pink”).

APAL is the peak body for Australian commercial apple and pear growers. One of its functions is to commercialise the PINK LADY trade marks in foreign jurisdictions, through a variety of exporters and distributors.

A company called Brandt’s Fruit Trees Inc (BFT), incorporated under the laws of Washington State, is the owner of certain PINK LADY trade mark registrations in the United States and Mexico. BFT has licensed PLA to use and manage BFT’s trade marks.

PLA was formerly part of an organisation called the International Pink Lady Alliance. This body was formed in order to handle global marketing strategies to do with the “Pink Lady” brand. BFT and APAL are part of the International Pink Lady Alliance. It also served as the licensed distributor to a number of different entities in different territories.

In late 2006 to early 2008, PLA filed three applications in Chile to register trade marks relating to PINK LADY. PLA left the International Pink Lady Alliance in 2010. APAL opposed the Chilean trade marks.

In resolution of that dispute, APAL and PLA to enter into an “Option Deed.” Under the Option Deed, PLA would register “Pink Lady” trade marks in Chile and then assign the trade marks to APAL. APAL would then license the trade marks back to PLA on an exclusive, perpetual, and royalty-free basis use in the context of export of PINK LADY-branded apples from Chile to North America. (The licence was subsequently extended to another type of apple called the Rosy Glow variety.) In 2008, the transfer from PLA to APAL of the three pending Chilean PINK LADY trade marks was effected.

In 2008, APAL and PLA also negotiated and entered into a ‘joint export licence’ for the Chilean market. This licence was an effort at consolidation: a device for APAL and PLA to engage with Chilean apple exporters by way of one license: this joint export license replaced multiple licence documents. It was issued from time to time to by the parties to exporters, over a period of three years.

But then the relationship went sour:

PLA alleged that the Option Deed’s terms covered not just the existing trade marks, but also any future logos to be adopted internationally for the “Pink Lady” brand. This included the most recent refresh of the logo, which consisted of a composite mark featuring a flowing pink heart and the “Pink Lady” brand in cursive font.

The lesson from contract lawyers arising from both the first instance decision and the Court of Appeal’s findings comes from this aspect of the licence:

‘…APAL will hereby grant to PLA an exclusive licence to use the Trade Marks with respect to all trade in Products between the Territory (Chile) and North America (The United States, Canada and Mexico). This licence will be royalty free, and will last in perpetuity subject only to the quality control provisions contained therein…’ (Clause 5.1),

Justice Croft said that this manifested the parties’ intention was that, once enlivened, the licence could not be brought to an end, except in that singular event of a quality control failure. (The Victorian Court of Appeal noted at length the Brand Manual, which “also emphasises the need to control brand equity throughout the world”.) Consequently, as a matter of construction, the licence survived termination of the Option Deed. The Court of Appeal said at [222]-[223]:

The IPLA Operating Agreement is a multi-lateral agreement which binds all members of IPLA to give effect to 75 per cent majority decisions about marketing and advertising strategies. It can be accepted that the IPLA Operating Agreement required both PLA and APAL to use the refreshed mark, once this was mandated, and the Brand Manual made this plain. It can be accepted that it was in discharge of this obligation that the refreshed mark was used on the cover of the Joint Export Licence granted by PLA and APAL to approved Chilean exporters in 2010. In particular, once the IPLA members agreed to the future use of the refreshed marks, APAL was obliged as an IPLA member to permit other members to use the refreshed logos in the export trade, including in Chile. Both PLA and APAL, as IPLA members at the time, were simply giving effect to their obligations under the IPLA Operating Agreement…. But this does not mean that the rights and obligations of the IPLA Operating Agreement were to be converted into rights and obligations of the agreement under the Option Deed. Not only is the IPLA Operating Agreement a multi-party agreement and the Option Deed bilateral, but the scope of the rights and obligations are quite distinct.

For trade mark licenses, the outcome of the failure to obtain leave to appeal to the High Court is that the decision of the primary judge, that an trade mark licence can survive termination of the underlying agreement, remains good law. Parties negotiating trade mark licences should think about the life of the licence if the underpinning agreement is terminated, especially where the license contains a perpetual or conditional clause.

• APAL and PLA each ceased issuing the ‘joint export licence’ in respect of exports from Chile.
• On or about 7 December 2012, APAL filed an application to register the Flowing Heart Mark in Chile.
• PLA filed an opposition to APAL’s application in March 2013.
• In May 2013, APAL issued a single export licence from Chile to markets which included Canada and which referred to both the Flowing Heart Mark and the Kangaroo Device Mark.
• In September 2013, PLA also filed its own applications to register a number of trade marks, including the Flowing Heart Mark, in Chile.

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.

“Made in…?”: Country of Origin Labelling Reforms in Australia

Recent changes to the Australian Country of Origin Food Labelling Information Standard 2016 (“CoOL”) was no doubt influenced by the notorious frozen berry scare in Australia in 2015, which allegedly linked a hepatitis A outbreak to imported frozen berries. This generated public interest in transparency in origin of food labelling. The changes will have a significant effect on businesses that market unpackaged goods, bringing these goods into parity with packaged foods. This means that along with the removal of mandatory minimum font sizes, CoOL information displayed in association with unpackaged food must be legible, prominent, distinctive, and in English. The changes also require signage displayed in association with unpackaged food to be in close proximity to the relevant product.

Additionally, the ACCC has also now provided a guide for businesses that make country of origin claims. The old system only required product labels to state if the product is made from imported and local ingredients. This created a loophole, by which businesses could imply that the products are mostly of Australian origin, even though most of the ingredients are foreign. By way of one extreme example, a can of mushrooms could be labeled as made from local and imported ingredients, even though only the water they are preserved in is sourced from Australia. The mushrooms themselves could be imported from another country.

Under the new Country of Origin Food Labelling Standard, country of origin claims can be made using one of four different categories. More or less in order of the strongest to weakest connection to a country, these are: “Grown in”, “Product of”, “Made in”, and “Packed in”.

However, there are valid concerns coming from producers both small and large scale about the compliance costs of detailed labelling, especially on unpackaged foods. Also of note are producers of products that are affected by seasonality and availability of ingredients, such as butter. The availability of butter in Australia is not consistent, and there are times of the year when producers need to purchase some of their ingredients overseas. The concern is not so much the cost but the impossibility of changing labels and packaging every time they need to source their ingredients from somewhere else.

Another complaint is that highly processed foods and drinks are exempt from the new laws. The Government notes that this exemption was made because research shows that consumers did not necessarily care too much about the country of origin of highly processed food and drinks, such as biscuits, softdrinks, alcohol, snacks, confectionary etc, so they made these “non-priority” products exempt from the laws. (Which seems intuitively remarkable, that a consumer would not care of lemonade was made in China or Australia.)

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.

Sabacc Strikes Back: Disney’s Latest Star Wars Dispute

US entertainment monolith Disney is once again flexing its legal muscle in order to protect its evergreen Star Wars brand. This time, the dispute is over a concept that was introduced within the story of its Star Wars movies, called “Sabacc”. This obscure Star Wars indicia was first referenced in a draft screenplay for the second film in the franchise, The Empire Strikes Back (1980), and has since appeared in various LucasfFilm properties in various mediums. (Disney is, famously, the owner of LucasFilms, and LucasFilms makes Star Wars movies and licenses the Star Wars brands.)

The defendant in this case is a company called Ren Ventures, which in 2015 started selling a mobile game version of Sabacc and successfully filed a US trademark registration for the term “Sabacc” in 2016. Here is an extract from the US Patent and Trademark Office’s records:

Disney’s complaint is almost certainly linked to a new film entitled Solo: A Star Wars Story on May 2018. It is not known whether the Sabacc game features in the forthcoming motion picture, but the novelisation of The Empire Strikes Back film explains that the Han Solo character’s iconic starship, the Millennium Falcon, was won through a game of Sabacc, so there is a possibility that the card game will be used in the movie’s story.

Ren Ventures’ main argument is that LucasFilm did not trade mark Sabacc, and that all appearances of the term in books and games relied on the Star Wars trade mark to distinguish it. Disney, on the other hand, alleges that Ren Ventures’ mobile game both copies and misappropriates the Sabbac game in order to capitalise on the goodwill established by both the Sabacc brand and the Star Wars franchise. Disney seeks a cancellation of Ren Ventures’ trade mark for Sabacc as well as an injunction restraining Ren Ventures from using the term. Disney also seeks punitive and statutory damages, and a disgorgement of profits and attorney’s 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.