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

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Jay Hines, a partner at US intellectual property attorneys Cantor Colburn LLP, has flagged a looming deadline. Jay writes:

"Colombia recently liberalized the administration of the .co country code domain name to open it up globally and streamline the registration process. Trademark owners with an interest in obtaining “domain.co” domain names that correspond to registered marks may now do so during a sunrise launch that ends on June 10, 2010. Any trademark that was registered in any country prior to July 30, 2008 is eligible to be registered in advance of the opening of general availability on July 20, 2010.

We are not at all certain how popular the .co top level domain will be under this new extension. The attraction of course is due to the fact that .Co is the abbreviation for “Company.” Whether or not you are interested in using a .co domain name, taking advantage of the sunrise period may prevent problems with third parties, perhaps from other countries, registering .co domain names identical to your registered trademarks once this category is opened up globally later this summer.

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An Australian brewing giant has been forced to change the name of an entire beer range after losing a trade mark infringement case in the High Court of Australia brought by a US wine giant. Mmmm, beer. Reminds me of that famous exchange between the then High Court judges and counsel during argument in Joslyn v Berryman (2003) 214 CLR 552; [2003] HCA 34:

CALLINAN J: Mr Jackson, it seems to me that clearly the people at the party, including Ms Joslyn and Mr Berryman, went out with the intention of getting drunk.

MR D F JACKSON QC: It would be a big night, your Honour, big night.

CALLINAN J: With the intention of getting drunk and they fulfilled that intention.

MR JACKSON: Well, your Honour, young people sometimes——

KIRBY J: I just think “drunk” is a label and I am a little worried about—it is not necessary to put that label. It is just that they were sufficiently affected by alcohol to affect their capacity to drive.

MR JACKSON: Yes.

KIRBY J: “A drunk” has all sorts of baggage with it.

HAYNE J: Perhaps “hammered” is the more modern expression, Mr Jackson, or “well and truly hammered”.

MR JACKSON: I am indebted to your Honour.

KIRBY J: I do not know any of these expressions.

McHUGH J: No, no. Justice Hayne must live a very different life to the sort of life we lead.

KIRBY J: I have never heard that word “hammered” before, never. Not before this very minute.

Anyhoo, I digress (and Justices Kirby, McHugh and Callinan have since retired). Back in 2008, US wine company E. & J. Gallo Winery (Gallo) brought Australian brewer Lion Nathan National Foods (Lion Nathan) before the Federal Court of Australia, claiming that Lion Nathan's "Barefoot Radler" brand of beer infringed Gallo Winery's "barefoot" trademark, used by Gallo on a range of budget wines. The Australian Trade Marks Law Blog reported that first instance decision HERE.

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In one of the few recently decided High Court cases dealing with trade mark issues, a unanimous decision was handed down in Health World Limited v Shin-Sun Australia Pty Ltd [2010] HCA 13 allowing an appeal relating to the meaning of ‘aggrieved’ under the Trade Marks Act 1995 (Cth) (the Act). The High Court found that Health World had the requisite standing to challenge Shin-Sun’s HEALTHPLUS trade mark and remitted the matter to the Full Federal Court for determination of the remaining issues.

Background

Health World Limited (Health World) has been manufacturing and supplying probiotic capsules under the name INNER HEALTH PLUS since 2000 and is the registered proprietor of the name INNER HEALTH PLUS (the Health World trade mark).

Since 2001 Shin-Sun Australia Pty Ltd (Shin-Sun) has manufactured and sold health supplements under the name HEALTH PLUS. Following a failed opposition by Health World Shin-Sun registered the trade mark HEALTH PLUS with IP Australia (the Shin-Sun trade mark).

At First Instance

Health World commenced proceedings in the Federal Court to have the Shin-Sun trade mark removed seeking cancellation under Section 88(1) of the Act, as well as non-use under Section 92 of the Act, both of which have the standing requirement that the applicant be an ‘aggrieved person’ (there was the additional requirement under Section 92 of the Act as it stood prior to the commencement of the Trade Marks Amendment Act 2006 (Cth) that the applicant for non-use be a ‘person aggrieved’)

At the same time, Shin-Sun brought their own non-use application under Section 92 of the Act against Health World. 

The Trial Judge dismissed all three applications. A detailed discussion on this first instance case by the Australian Trade Mark Law Blog can be accessed HERE.  

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Australian idiom for “it will be alright” is “she’ll be apples” but recently, Apple Inc found that she won’t. A recent decision by a Delegate of the Registrar of Trade Marks (Apple Inc v Wholesale Central Pty Ltd [2010] ATMO 7) has found against Apple Inc., and in favour of a small company dealing in digital device accessories to continue to use their ‘DOPi’ brand. On the face of it the decision appears fairly obvious considering the differences in the marks in question (‘iPOD’ vs ‘DOPi’(stylised)) but the case does emphasise Apple’s litigation strategy to box-on regardless of the merits of a case.

Wholesale Central Pty Ltd filed a trade mark application for ‘DOPi’ (stylised) in Class 9 on 24 February 2007 (Australian trade mark Application No. 1162904) which was accepted by an Examiner and then opposed by Apple Inc on 21 September 2007. Although all grounds of opposition were claimed in the Notice of Opposition, only the grounds under Sections 44 and 60 of the Trade Marks Act 1995 were pursued at the Hearing.

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The 12 November 2009 decision in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299 focuses almost exclusively on whether the defendant had used the plaintiff’s trade mark ‘as a trade mark’. Alcon has a registered trade mark ‘BSS’ for ophthalmic irrigation products and, not surprisingly, objected to Bausch & Lomb (BL) using the expression ‘BSS’ on its labels for its products. The case revolved primarily around the issues of whether BL had used the trade mark as a trade mark and related issues as to whether the trade mark should remain registered, primarily on the grounds that it was not distinctive.

Whether BL was using the letters BSS as a trade mark required a detailed analysis of the context of that use. Set out below are the findings of the Judge.

155.          The following factors are relevant to the present question:

(a) The letters “BSS” appear in block white letters in the top section of the label with the royal blue background. The trade mark “AQSIA™” appears in the same part of that label. The letters used to form “AQSIA™” are larger than those used to form “BSS”. This part of the label is intended to be separate from and more prominent than the rest of the label. The impression created by the positioning of “AQSIA” and “BSS” is that this part of the label is dealing with branding of the product;

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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’.