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

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In Chanel Limited v Kim [2007] FCA 2076 (20 December 2007) the applicants (Chanel) sought an order to restrain the Chief Executive Officer of Customs (Customs CEO) pursuant to s 137(5) of the Trade Marks Act 1995 (Cth) (Act) from releasing a consignment seized by the Customs CEO on 19 September 2007 pursuant to s 133 of the TM Act comprising 100 scarves bearing the ‘CHANEL’ trade mark or Chanel’s ‘Crossed C’s Device’ mark. The consignment was seized on the ground that, in the opinion of the Customs CEO, the scarves had applied to them a sign that was substantially identical with, or deceptively similar to, a registered trade mark.

A question of construction arose on ‘an internal inconsistency, or at least infelicity’, (para 27) in the language of s 137(5) , which states:

‘If, after 20 working days from the day on which the action was brought, there is not in force at any time an order of the court directed at the Customs CEO preventing the goods from being released, the Customs CEO must release the goods to their designated owner.’ (Emphasis added)

The Court held that the sub-section is not intended to preclude the Court from making an order preventing the Customs CEO releasing seized goods even after the expiration of the 20 day period and that an order preventing release of the goods may be made and come into force ‘at any time’ after the expiration of the 20 day period.

So what?

Be aware that the Customs seizure process is date driven: an action for infringement must be brought within 10 days of receiving a notice from the Customs CEO, or -- if an extension is applied for before the end of the notified period -- within any extended period granted by the Customs CEO. An order should then be sought to be granted within the 20 day period after the proceedings issue.

As Justice Sackville pointed out (at para 28), the usefulness of a Court order after the expiration of the 20 day period depends upon the Customs CEO not having complied with his or her statutory duty to release the goods in a timely fashion. No point seeking an order after the goods are released. The case ended happily for Chanel this time, but only a thrill-seeker would wait until after the 20 day period expires for an order to be granted.

Oh my! Is that the time already? Happy New Year.

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Although specifically mentioned in section 6 of the Trade Marks Act 1995 under the definition of "sign", it appears unlikely that any Australian applications will be filed in 2007 for protection of a scent mark.  In fact, there are currently no live applications on the Australian Register.  Regardless, there is increasing discussion and attention on non-conventional marks, particularly smells, in the light of brand owners being under a constant challenge to release products that are more distinctive than those of their competitors.  The use of "white tea, the calming new scent of Westin" is a good example of how traders are seeking to lure customers by appealing to their noses.

Different approaches for dealing with scent marks have been adopted across numerous jurisdictions.  In summary, European Offices have rejected them, the United States is generally more liberal in accepting them and Australia falls somewhere in the middle.

Australia

The Australian Trade Marks Office Manual of Practice and Procedure states that the capability of a scent to distingush goods and/or services should be decided "on the basis of whether other traders would want or need to use it in the ordinary course of their business, without improper motive".

The registrability requirements are outlined as follows:

• the application must include a graphical representation of the scent mark.  This could be a precise verbal desciption.
• the graphical representation must be in a form that conveys information to the ordinary person allowing them to identify the mark.  Highly technical data will not be accepted as a graphical representation.
• an actual sample of the scent is not required but may need to be adduced during examination.
• a precise and accurate description to be included as an endorsement in the application must also be provided.

A total of 7 applications have been filed so far in Australia.  The only application found to be acceptable by the Australian Trade Marks Office was Trade Mark No 700019 covering darts in Class 28 having the strong smell of beer.  Despite its inaugral success this application never proceeded to registration.

United States

In the United States scents can be protected as trade marks provided they do not serve a functional purpose (TMEP § 1202.13).  In a landmark decision, (Re. Clarke, 17 U.S.P, 1990) the Trade Mark Trial Appeal Board allowed registration of an arbitrary, non-functional scent ("high impact, fresh floral fragrance reminiscent of plumeria blossoms") for sewing thread and embroidery yarn, Reg. No. 1639128, but subsequently abandoned.  Current registrations include "a grape scent" and "a strawberry scent" for "lubricants and motor fules for land, vehicles, aircraft, and watercraft" Reg. No. 2568512 and Reg. No.2596156 respectively. However, to date few scent marks have been registered or even applied for. 

Europe

Theoretically, the European Union Office for Harmonisation for the Internal Market (OHIM) recognises that scent marks are eligible for trade mark registration.  However, in practice a contradictory position exists; there is no bar to filing an application for a scent mark, but at the same time, there are no acceptable methods or techniques for describing such scents.  The 2002 decision “Sieckmann” of the European Court of Justice (ECJ) essentially concerned the question of what is an acceptable representation of an olfactory trade mark.  The ECJ held that “a trademark may consist of a sign which is not in itself capable of being perceived visually, as long as it can be presented graphically by means of images, lines or characters and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

As a result of the Sieckmann decision, it has and will continue to be very difficult, perhaps impossible, to register scents regardless of whether they are intelligible to the majority of the public and capable of depiction in the form of a written description. 

As marketing techniques continue to develop and technology further enhances ways to recreate and infuse odours, there is a possibility that we will see an increase in interest towards scent marks.  A recently published paper by Bhagwan., et al (MPRA)  that explores the economic rationale for scent marks makes further interesting reading on this topic.

 

 

 

 

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There are a number of trade marks events coming up early in 2008. The following list is not exhaustive:

19-28 February 2008 IP Passport - Helping your business take off overseas, (Held in various States and centres, see here for dates). Seminars on intellectual property issues when exporting, presented by Australian Chamber of Commerce and Industry (ACCI), and State and Territory Chambers together with IP Australia

20-22 February, 2008 Thomson’s Intellectual Property Strategy Forum 2.0, Sydney. International and local speakers on protecting and leveraging brands.

26-28 February, 2008 IIR’s Branding and Marcomms for Financial Services, Sydney. Puff piece states “Analyse and develop your company's brand positioning, develop winning strategies and instigate future financial success”. Noteable for its lack of a speaker on trade marks issues.

11-12 March, 2008 INTA & IP Australia’s, Trade Mark Regatta - Asia Pacific Conference, Sydney. INTA’s first educational conference in Australia.

13-14 March, 2008 IP Australia’s Senior Trade Mark Officials’ Forum, Sydney. A conference for international trade marks officials and other ‘government stakeholders’.

2-5 April, 2008 IPTA / NZIPA 2008 Joint Annual Conference, Auckland. Includes sessions on harmonisation, U.S. litigation, domain names, trade marks, designs, IP update, oppositions, client relationships and tendering.

17-19 April, 2008 LESANZ Annual Conference - Entrepreneurship and Innovation – Not such risky business, Melbourne.

If there is a conference you think should be listed here, contact us.

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In Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184, the Full Court appeal from the decision at first instance of Finkelstein J., in Colorado Group Ltd v Strandbags Group Pty Ltd (2006) 67 IPR 628, [2006] FCA 160 and Colorado Group Ltd v Strandbags Group Pty Ltd (No.2) (2006) 69 IPR 281[2006] FCA 880 , the Court again considered two issues, being those of ‘proprietorship’ and ‘inherent distinctiveness’.

By way of background, from 1982, Colorado Group first used the Colorado mark as a word mark on backpacks. From 1987, the word mark in combination with a "simple mountain motif," was applied to shoes. By 1991, Colorado Group had developed a three peaked mountain logo for use in conjunction with the word "Colorado" but until 1997 often used the word alone on bags which appears to be a reference to handbags, shoulder bags and other fashion bags (but it was not used alone on wallets and purses). In 2001 it registered its word mark to cover, amongst other things, bags, wallets, purses, backpacks and belts.

In 1991, the predecessor to Strandbags Group registered "Colorado" with an “Indian head” device as a combination mark in respect of handbags, travelgoods and belts in class 18 and in the years after applied it to an expanded range of goods, among them, backpacks, briefcases, wallets and purses. The word "Colorado" featured in both side’s shopfront designs. Continue Reading...