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

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It is Australian Open time again, so this seems topical. According to Melbourne newspaper The Age, local hope, tennis player Lleyton Hewitt “is trademarking his "C'mon" celebration and is going into business.” The article is here.

A quick search of the trade mark applications revealed that Lleyton Hewitt Marketing Pty Ltd has applied for the following to be registered:

• “Lleyton & Bec Hewitt” in class 41
• “C’mon” (stylised device) in classes 9, 14, 16, 25, 28, 32 and 41
• A stylised logo representing a man wearing a cap with a hand pointing to his face in classes 9, 14, 16, 25, 28, 32 and 41
• “C’mon” together with the stylised logo representing a man wearing a cap with a hand pointing to his face in classes 16, 25, 28 and 41
• “Lleyton Hewitt” in classes 9, 14, 16, 25, 28, 32 and 41

The goods and services sought to be protected cover items including sunglasses, watches, plastic jewellery, party hats, hooded pullovers, frocks, blouses, playing cards, beer, health club services and many others. A copy of the Search Report can be downloaded here.

So what?

As Lleyton Hewitt knows, wanty wanty does not mean getty getty. The Hewitt applications will need to get past someone else’s prior trade mark application for “C’mon” covering goods in class 25.

The goods and services applied for are far-reaching, possibly over-reaching. Once registered, each mark will need to be used on the relevant goods or services covered by each application within 3 years (of the application date) or -- by the operation of section 92 of the Trade Marks Act 1995 (Cth) (Act) -- the relevant mark will be vulnerable to removal from the register for non-use in respect of those goods or services. "Use" within this context means "use of a trade mark in relation to goods" and "use of a trade mark in relation to services" within the meaning of section 7 of the Act and the attendant case law.

The Age reports that Hewitt’s characteristic hand signal was invented in the 1980’s by a Swede called Niclas Kroon who called it “the vight”: meaning in Swedish something like ‘for sure’. It was popularised by another Swede, Mats Wilander. On some reports, Kroon is cross that he let his registered trade mark lapse and has now learned that Hewitt is applying for it. This idea is misconceived.

A trade mark that depicts a gesture may well be registrable in Australia under sections 41(5) or 41(6) of the Act, but they enjoy no separate status as a 'gesture mark'. There are examples of this type of non-traditional mark overseas, for example on the UK Register for a person tapping his nose and in the United States, there was a dispute between a wrestler and some rapper over use of a 'diamond cutter' hand gesture: details here and here. Hewitt is not seeking to register a 'gesture mark' but simply a stylised device, possibly because Niclas Kroon would have 'priority' as the first user of his 'gesture mark' and may well have 'used' the gesture in Australia in a trade mark sense: (see Carnival Cruise Lines Inc v Sitmar Cruises Ltd 1994 FCA 936, AIPC 91-049, 120 ALR 495.  If the Hewitt applications eventually achieve registration, they will not prevent others from performing "the vight". Unfortunately.