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

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

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

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

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

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

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

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

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

A Brief Word on Shape Marks

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

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

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

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

(“the JKA goods and services”).

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

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

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

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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.