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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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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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In Kimberley-Clark Worldwide, Inc v. Goulimis 2008 FCA 1415 (16 September 2008), the applicant (Kimberley-Clark) made an appeal to the Federal Court of Australia and successfully quashed the Registrar’s decision on 17 January 2008. The Registrar had allowed the respondent to register the trade mark HUGGIE MUMMY, classified under Class 35, a service class relating to the “direct selling of baby toddler’s toys, videos, CD’s books, games and accessories”. The applicant and the respondent’s trade marks were not registered in overlapping classes. The reason for the Registrar’s allowance of the respondent’s trade mark registration in the first place was that the Registrar found ‘the respondent’s service and the applicant’s goods have little in common but for the ultimate consumers – parents of babies and toddlers’.

The appeal was made under s 56 of the Trade Marks Act 1995 (Cth)(Act) and heard by Justice Jagot of the Federal Court in Sydney.

The applicant is the registered owner of various trade marks containing the word HUGGIES, with priority dates preceding the respondent’s priority date of 15 November 2007. The HUGGIES trade marks for disposable nappies are well known to the Australian public, and have been used in Australia since 1987 by the applicant’s parent company.

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In an act guaranteed to pick a fight with two 800 pound gorillas, an attempt to register the mash-up name ‘GOOGLEBAY’ as a trade mark in Australia has failed. This follows a WIPO Panel decision that the same applicant transfer the domain name <googlebay.com.au> to Google Inc.

Trade Mark Opposition

In Google, Inc v Dmitri Rytsk [2008] ATMO 40 (28 May 2008), an Australian Trade Marks Office Decision published on 8 July 2008, an opposition under section 52 of the Trade Marks Act 1995 (Act) by Google, Inc to registration of trade mark application 1118972 for GOOGLEBAY in class 35 was upheld with both section 44 (deceptive similarity of the mark in respect of similar services or closely related goods) and section 60 (trade mark deceptively similar to a mark with a reputation in Australia in respect of both related and unrelated goods) grounds were established. Registration was therefore refused.

The Hearing Officer’s analysis was fairly conventional but there are two points of interest to note.

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The Managing IP World Intellectual Property Survey 2008, which publishes detailed rankings of the leading firms practising intellectual property in each country, has listed Nicholas Weston for the first time since the firm was founded in 2005.

The firm is ranked in two categories: for Trade Mark Prosecution in Australia and for Trade Marks Contentious in Australia. Rankings are based on surveys of clients and recommendations from clients and other practitioners.

According to Managing IP magazine:

"The World IP Survey is not simply a list of the biggest firms, or a list of those that have the biggest case load or are the oldest. Instead it is a qualitative ranking of the leading firms in each category and reveals which firms are rated by their peers for the strength of their expertise and the depth of their ability to service clients."

The IP Handbook 2008, published by Managing IP, includes full results of the survey, stating:

"Clients noted the thoroughness of the firm's paperwork and "attention to detail" ".

No firm can vote for its own inclusion or purchase a listing in the MIP World Intellectual Property Survey 2008 or the IP Handbook, which lists the leading firms in trade marks prosecution and contentious work in 65 jurisdictions. The survey is described by its publisher as “the world’s most detailed and authoritative survey of the IP market."

Details of the survey methodology can be found HERE

Survey results for Asia can be found HERE .

About Managing IP

Managing Intellectual Property is the leading international magazine for IP owners, with more than 8,000 readers across the globe. About two-thirds of readers are senior in-house counsel in multinational companies.

Published 10 times a year, Managing IP provides news, comment, data and analysis. Managing IP is part of the Euromoney Legal Media Group, with offices in Hong Kong, London and New York.

About Nicholas Weston

Founded in 2005, Nicholas Weston is small but mighty Australian law firm delivering trade marks and other commercial legal services to clients worldwide in core sectors of disputes, technology, and brands.

Each professional is a dual qualified lawyer and registered trade marks attorney. Nicholas Weston claims practical implementation of thought leadership. The firm is located on Collins Street, Melbourne in the historic Assembly Hall.

For further details contact Nick Weston or Lea Lewin.

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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.

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A recent decision of the Trade Marks Office on the distinctiveness of the trade mark ‘Cashcard’ for debit and credit cards reveals the potential importance of dictionary entries in the Macquarie Dictionary. Cashcard Australia Ltd [2007] ATMO 70 (8 November 2007) also demonstrates the well known proposition that extensive use of a trade mark does not necessarily equate to use generating distinctiveness of that trade mark.

The Macquarie Dictionary was first published more than 25 years ago and is the accepted dictionary of ‘Australian English’. The examiner of the application for registration of ‘Cashcard’ noted that the Macquarie Dictionary defined the word as ‘a card which allows one to perform certain banking activities via an automatic teller machine’.  Yet the entry was a relatively recent entry and the 1987 edition of the Macquarie Dictionary, published some three years after initial use of the term by the applicant, did not have the one word ‘cashcard’ in it at all.

At the hearing, the Delegate declined to attribute any significance to either the existing entry in the Macquarie Dictionary or the absence of an entry in the 1987 edition as there was no evidence as to whether the current entry was the product of the applicant’s use of the term or the fact that it had entered the common language of Australian consumers by the joining of two common words with a clear connection.

The Delegate then proceeded to form the view that the trade mark lacked inherent distinctiveness for the purposes of s41(3) of the Act. While the Macquarie Dictionary was ultimately disregarded in that decision on the issue of inherent distinctiveness, the examiner’s comments and the decision itself reflect the potential importance of the Macquarie Dictionary and why every Australian trade mark practitioner needs a copy and access to previous editions.

The Delegate’s decision also went on to consider whether “Cashcard” had acquired sufficient distinctiveness through use to justify registration pursuant to s41(6) of the Act. The applicant attempted to make much of the fact that its ‘trade mark’ appeared on 22,000 Australian ATM machines. The Delegate was unimpressed, saying (at para 30):

"I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods."

Other evidence, including some surveys on distinctiveness which were contaminated by some leading questions, was rejected as demonstrating distinctiveness by use.

Professor Mark Davison

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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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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.