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Bah! No trade marks decisions of significance have been handed down by the Federal or High Court in weeks, so I am resorting to a Federal Court case my firm acted in earlier this year that resulted in a non-confidential settlement entirely in our client’s favour. The settlement was deliberately not confidential so as to send a loud signal to other member organisations in the federation of Japan Karate Associations throughout the world not to help themselves to intellectual property belonging to head office in Japan.

In Japan Karate Association v. Japan Karate Association of Australia (JKA) Pty Ltd (Federal Court No. VID 1039 of 2008) Nicholas Weston Lawyers & Trade Marks Attorneys, the law firm behind the Australian Trade Marks Law Blog, acted for the Applicant, the Japan Karate Association (“JKA”). JKA was established in Japan in 1958 to promote the martial art of karate (“the JKA business”) and since about 1963 had conducted that business throughout the world by:

• providing karate education, exams and training to pupils:
• training, ranking and accrediting karate instructors;
• sponsoring accredited instructors to travel overseas to teach and promote   karate;
• arranging and conducting karate tournaments and exhibitions;
• producing and selling publications and videos/DVDs relating to karate;
• producing and selling clothing and equipment for use in karate.

(“the JKA goods and services”).

JKA had also used the name NIHON KARATE KYOKAI or its English translation JAPAN KARATE ASSOCIATION and the acronym JKA in relation to the JKA business and the JKA goods and services since around 1963 and since at least 1958, used a “Sun and Moon” device (illustrated below) created by and for JKA in 1958 in relation to the JKA business and the JKA goods and services:

JKA also claimed copyright in the  “Sun and Moon” device. Collectively, “the JKA marks” comprised the name JAPAN KARATE ASSOCIATION, the acronym JKA and the “Sun and Moon” device.

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Facebook has announced that it will begin offering personalised username URLs to its users. On a first-come, first-served basis commencing 13 June, 2009 Facebook users are able to register personalised domain names such as www.facebook.com/yourname for their Facebook pages. Previously, a user’s Facebook URL was comprised of randomly assigned numbers.

Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog comments that offering such services is a new potential opportunity for trade marks infringers and cyber-squatters. These procedures may be abused by reserving your – or your client's - trade marks as their username and thereby hold themselves out as being affiliated with the genuine trade mark owner. For example, any particular user might register www.facebook.com/yourtrademark.

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The curious afterlife of old bands, some of whom survive their original membership, is a little publicised niche of the IP world. Legal disputes about who owns the rights to the names of some of the world's most lauded rock bands are not uncommon. The oddest is probably Blood Sweat and Tears, which shows up with scattered members from the past but also "with Chuck Negron" who acquired rights to the group but had nothing to do with it originally. Instead he was with Three Dog Night, which tours without him. 

Last year, the five members of the Angels who shot to fame in Australia in the late 1970's re-united after one such dispute. Part of the Australian citizenship test is to recite the rejoinder to the Angels' hit "Am I Ever Gonna See Your Face Again?" In another barney that ended up in court, the founding members of Australia's 'Little River Band' are unable to trade under that name because they sold it to a guitarist in the 80’s who ended up with all the shares in the company that owned the rights to the name. When they tried to tour as the ‘Original Little River Band’ a couple of years ago, he sued them and won. Now they trade as 'Birtles, Shorrock, Goble of the original Little River Band'. To someone who did not like their sound in the first place, now they sound like a law firm.

In a recent dispute over the name HERMAN'S HERMITS, Frimp Ltd v Jan Barry Whitwam [2009] ATMO 5 (19 January 2009) Jan Whitwam (the Applicant), who was not in the original 1963 line-up but was from 1964 a drummer in the famous 60's British act, applied in Australia to register the trade mark HERMAN'S HERMITS  in class 16 for "Printed matter, posters, photographs, stickers" and in class 41 for "Entertainment services; live performances by a musical group including performances of recorded music by a musical group." The applicant also owns the trade mark in the United Kingdom in class 41 and for the European Community in classes 16 and 41.

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In Showtime Management Australia Pty Ltd v Showtime Presents Pty Ltd [2008] NSWSC 594 (13 June 2008), Austin J., granted an interlocutory application requiring the unsuccessful parties to bring the profits of a Queen tribute act concert tour in South Africa into Australia, to be held securely pending the outcome of proceedings to determine which of the parties to the litigation owns the name and other rights in a business comprising the relevant Queen tribute act and a further such act. The Court also made orders for the respondents to provide detailed sworn accounts and source documents.

The case illustrates the importance of Corporations Act, common law and equitable remedies where IP rights are disputed in consequence of the termination of a joint venture where a company structure (and, in this case, also a trust) is involved. A narrow skill set, or IP-centric approach, may not be appropriate to such cases.

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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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Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog has moved to so-called 'cloud computing' technology architecture with the adoption of the WebTMS browser-based trade mark management system. According to Nicholas Weston, this infrastructure purchase will significantly strengthen this practice area and prove a real asset to the firm.

WebTMS enables Nicholas Weston to offer clients browser-based trade marks portfolio management applications that utilise the same infrastructure powering major US and UK law firms, and US Fortune 500 corporate IP departments. A list of users can be found HERE.

Key Features of WebTMS

The following key features of WebTMS are set out in detail below and can be summarised as follows:

• the most secure, robust and advanced trade mark management and docketing system available and has been used by the world’s leading firms for over 5 years;
• real time access for Clients to the cases Nicholas Weston is handling for them with 24/7 worldwide secure access to a Client's trade mark portfolio details from any computer with an internet connection;
• foreign Agents can update the cases they are handing for Nicholas Weston;
• a repository for all trade mark and intellectual property data, with images and supporting documents;
• database links to the trade marks offices of 12 jurisdictions, for click throughs, data audits and automatic data loading;
• built in trade mark searching for the 12 online trade marks offices, with search results management;
• workflow wizards to maximize efficiency;
• designed by trade mark attorneys for trade mark attorneys, and supported by extensive user input.

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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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Impact and Virtually Blind blogs report  that “the Second Life Patent and Trademark Office (SLPTO) has opened its doors.” The SLPTO appears to have no connection with the owners of Second Life, Linden Lab.

The SLPTO website states: “We allow you to register, protect, and add value to your Second Life creations to protect your intellectual property rights”. Section 157 of the Trade Marks Act 1995 (Cth) prohibits use of the words "Trade Marks Office" and "words of similar import" in this jurisdiction. It states:

“(1) A person:

(a) must not:

(i) place, or allow to be placed, on the building in which his or her office is situated; or

(ii) use when advertising his or her office or business; or

(iii) place on a document, as a description of his or her office or business;

the words "Trade Marks Office" or "Office for registering trade marks", or words of similar import (whether alone or together with other words); or

(b) must not use in any other way, in connection with his or her business, words that would reasonably lead other persons to believe that his or her office is, or is officially connected with, the Trade Marks Office.

Penalty: 30 penalty units.

(2) An offence under this section is an offence of strict liability.

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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.