Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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

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

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

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

For ease of reference, the relevant trade marks are:

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

‘EVERY DAY LOW FARES’ (the Virgin mark)

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

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

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

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

The highlights from the 2009 Survey are summarised below.

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

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

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

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

Background

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

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

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

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

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

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

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

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The curious afterlife of old bands, some of whom survive their original membership, is a little publicised niche of the IP world. Legal disputes about who owns the rights to the names of some of the world's most lauded rock bands are not uncommon. The oddest is probably Blood Sweat and Tears, which shows up with scattered members from the past but also "with Chuck Negron" who acquired rights to the group but had nothing to do with it originally. Instead he was with Three Dog Night, which tours without him. 

Last year, the five members of the Angels who shot to fame in Australia in the late 1970's re-united after one such dispute. Part of the Australian citizenship test is to recite the rejoinder to the Angels' hit "Am I Ever Gonna See Your Face Again?" In another barney that ended up in court, the founding members of Australia's 'Little River Band' are unable to trade under that name because they sold it to a guitarist in the 80’s who ended up with all the shares in the company that owned the rights to the name. When they tried to tour as the ‘Original Little River Band’ a couple of years ago, he sued them and won. Now they trade as 'Birtles, Shorrock, Goble of the original Little River Band'. To someone who did not like their sound in the first place, now they sound like a law firm.

In a recent dispute over the name HERMAN'S HERMITS, Frimp Ltd v Jan Barry Whitwam [2009] ATMO 5 (19 January 2009) Jan Whitwam (the Applicant), who was not in the original 1963 line-up but was from 1964 a drummer in the famous 60's British act, applied in Australia to register the trade mark HERMAN'S HERMITS  in class 16 for "Printed matter, posters, photographs, stickers" and in class 41 for "Entertainment services; live performances by a musical group including performances of recorded music by a musical group." The applicant also owns the trade mark in the United Kingdom in class 41 and for the European Community in classes 16 and 41.