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

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It is a golden rule that all businesses should conduct regular audits of the domain names they have - and those they should have.

In other words, companies should regularly:

• ensure they have all important domain names registered; and
• ensure no-one is making improper use of the company’s business or product names through registering unauthorised domain names.

There are now literally thousands of cases where names have simply been taken, improperly registered as domain names and then used to divert internet traffic to competitors or held hostage until the victim pays up and buys the name back.

And, of course, these cases are in addition to those where the name is used to make money by linking it to a pornography site or a shopping mall selling every imaginable range of goods and services- and some that are unimaginable! That, of course, is a very bad look for your company name to be used in that way.

Just how companies can get into trouble - and get out of it - is shown by two recent cases concerning the ANZ Bank.

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The Madrid System, administered by the International Bureau of the World Intellectual Property Organisation (WIPO) comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks (since 1892), and the Protocol Relating to the Madrid Agreement (in force as of 1 April 1996).  The Protocol introduced a number of innovations in the Madrid System with the successful aim of expanding  its geographical coverage.  Providing more time and flexibility to examine applications, as well as collecting higher fees for each application, has meant that most new members are acceding to the Protocol rather than the Agreement.  The countries and multi-country organisations belonging to the Madrid System constitute a diverse array of 81 trade mark jurisdictions, 57 of which belong to the Agreement, and 74 to the Protocol.    Australia has been a member of the Protocol only since July 2001.

According to WIPO, 2006 was 'a very good year'  for the international trade mark system with a record number of filings.  The current trend for new member countries, for example Australia and USA, is a substanial increase in the number of applications being filed each successive year.  2007 looks set to follow suit.

The Basics

The Madrid System provides the means to file a single application, in one office, in one language, with a single fee, and secure trade mark protection in multiple countries. 

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Non-conventional trade marks in Australia

The potential to register what are often referred to as non-conventional trade marks such as three dimensional shapes, sounds and scents was considerably expanded under the Trade Marks Act 1995 (Cth). Yet a recent analysis presented by a Principal Examiner in the Australian trade marks office to the annual IPSANZ conference has revealed that applications to register these trade marks have a poor record compared to more conventional trade marks.

Ms Alison Windsor’s analysis states that about 65% of trade mark applications are ultimately successful but the success rate for non-conventional trade marks lags well behind that rate. For example, only about 32% of applications for registration of shapes are successful. No scent has yet been registered in Australia.

Her paper suggested the two most likely difficulties with these applications.

1. The written descriptions of the trade marks are not sufficiently clear and precise. See the Full Federal Court decision in Woolworths v BP for an example of the need for precision.
2. The applications often fail to demonstrate the distinctiveness required under s41 of the Act and, in particular, insufficient use, as a trade mark, to demonstrate distinctiveness on the basis of use.

The lack of success on the basis of lack of distinctiveness is probably due to a number of factors but one is easily identified and explained. Applicants are seeking to obtain competitive edges by obtaining exclusive rights over shapes and other signs that other competitors would naturally wish to use. Obtaining registration in those circumstances will be difficult in the absence of distinctiveness obtained through use. Yet, the incentive to obtain such a competitive advantage outweighs the costs of unsuccessful applications.

 Professor Mark Davison

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In a media release on 7 October, 2007, Trade Minister Warren Truss announced that Australia has decided to participate - along with Mexico, Japan and the EC - as a third party in the World Trade Organisation (WTO) dispute brought by the USA against China on the protection and enforcement of intellectual property rights.

The press release is available here. Details of the dispute can be found here. The Chinese Government's response to the US decision to bring the case in the first place can be viewed here.

According to the Minister “the case raised important commercial and systemic issues in relation to WTO rules on intellectual property protection, including the meaning of counterfeiting or piracy 'on a commercial scale’ ”. He added that the action does not mean that Australia is “taking sides”. He may have said that because mainland China recently became Australia's biggest trading partner (overtaking Japan). But he may not have meant it, because a finding that China has failed to comply with WTO rules would make available to Australia WTO sanctioned retaliation measures.

On the Lawfont blog, Kim Weatherall says the case is about technical compliance with the letter of TRIPS rather than improving enforcement and rather wonders why Australia got involved if not simply in uncritical support of the US. Her article can be viewed here.  

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that Professor Mark Davison has joined the firm as a contributor to the Australian Trade Marks Law Blog.

Mark is currently Associate Dean (Undergraduate Studies) at Australia’s Monash University, and the author of several major works relating to intellectual property and competition law. He is the co-author of the third edition of Shanahan’s Australian Law of Trade Mark and Passing Off, the leading reference work on Australian trade mark law and has written The Legal Protection of Databases, a book published in the intellectual property series of Cambridge University Press. He has also published two casebooks dealing with competition law and aspects of consumer protection. In addition to his doctorate on sui generis protection of databases, he has a diploma in Indonesian language and studies and he is the winner of three Australian Research Council large grants.

Besides teaching Contract Law, Intellectual Property, Trade Marks and Commercial Designations and Copyright in the postgraduate and undergraduate courses at Monash, he has taught in various projects in Thailand, Vietnam and Indonesia.

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On 25 September, 2007, Nicholas Weston Principal Nick Weston was appointed to the International Trademark Association’s (INTA) Law Firm Outreach Sub-Committee of the Alternative Dispute Resolution Committee (ADR) for the 2008 – 2009 committee term.

This year, 2,300 volunteers applied to serve on INTA committees. The INTA Law Firm Outreach Sub-Committee promotes the use of ADR and the INTA Panel of Neutrals to law firms, including INTA Associate member law firms.

INTA describes itself as “a not-for-profit membership association founded in 1878 of more than 5,000 trade mark owners and professionals, from more than 190 countries, dedicated to the support and advancement of trade marks and related intellectual property as elements of fair and effective national and international commerce.”

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that The Hon. Neil Brown QC has joined the firm as a contributor to the Australian Trade Marks Law Blog in his capacity as an expert in domain names.

The Hon. Neil Brown, QC is a member of the World Intellectual Property Organisation (WIPO) Arbitration Centre's Domain Name Panel and its List of Neutrals following on from a long and distinguished career in Government and the law. He has been actively involved in Australian politics as a Minister, Shadow Minister, legislator and as a delegate to the United Nations and other international organisations.

Neil has also been appointed to the Panel of Conciliators at the International Centre for the Settlement of Investment Disputes (ICSID) at Washington, USA.

Amongst other positions, Neil has served as:

• Member of Federal Parliament; Commonwealth of Australia, 1969-91;
• Shadow Minister for Communications, 1990-91;
• Shadow Attorney-General, 1988-90;
• Shadow Minister for Justice, 1988-90;
• Shadow Minister for Employment and Industrial Relations, 1985-87;
• Deputy Leader of the Opposition, 1985-87;
• Shadow Minister for Foreign Affairs, 1985-87;
• Minister for Business and Consumer Affairs, Australian Government, 1982;
• Minister for Communications and Minister Assisting the Attorney-General, 1982-83;
• Minister for Employment and Youth Affairs, 1981-82;

In recent years he has also conducted two significant inquiries for the Commonwealth Government. You can read more about Neil’s background here or e-mail Neil here.

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On 29 October, 2007, Nicholas Weston, Lawyers & Trade Marks Attorneys celebrated the launch of the Australian Trade Marks Law Blog. The initiative is designed to complement the high-quality intellectual property services and high level of service the firm provides to its clients.

Since its inception in February, 2005, Nicholas Weston has focussed on trade marks as a core practice area. Nicholas Weston is an unstuffy Australian law firm delivering trade mark and other commercial legal services to clients worldwide in our core sectors of fashion, technology and U.S. law firms. Each member of the firm holds dual qualifications as a lawyer and also as a registered trade marks attorney. The firm claims practical implementation of thought leadership. In mid 2007, the firm re-located from its office in the Paris end of Collins Street, Melbourne to the historic Assembly Hall, in the heart of Collins Street, Melbourne. Details of the firm’s trade marks services can be found here. Details of the firm’s commercial services can be found here.

The Australian Trade Marks Law Blog is designed to communicate with U.S. law firms and others seeking a reliable source of information and commentary on Australian Trade Marks. The platypus is adopted as our masthead because the platypus -- like Australian Trade Marks Law (and the Australian version of English) -- can seem odd at first encounter. It is efficiently adapted to its environment. It looks like you could pat it. But it has a venomous spur on its hind legs that can cause excruciating pain. Nicholas Weston publishes the Australian Trade Marks Law Blog as a useful resource.

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