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Apple is opposing registration as a trade mark the new logo of Australian supermarket chain Woolworths, claiming that the stylised green W is too similar to its own famous apple logo. Woolworths’ applications were submitted in August 2008, and seek to include a wide range of electrical goods and technology.

Woolworths is seeking a blanket trade mark registration of the logo from IP Australia and, as the attached copy of the applications show, they are seeking to cover goods ranging from ‘manure’ in class 1 to ‘cream’ in class 29 (perhaps for rhubarb), to ‘flexible pipes, not of metal’ in class 17 to ‘entertainment’ in class 41 (hopefully, not in the same act). Apple submits that if the logo was used on electrical goods, specifically computers or music devices, it would be deceptively similar to Apple products and cause confusion among consumers. But apparently not confusing for children, (see the last page of the report) as the version of the stylised W logo with the strapline 'fresh food kids' is now registered.

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A recent decision by Justice Bennett concerning the use of the word ‘Bavaria’ in relation to beer has provided some interesting insights into the extent of protection provided for geographical indications under our trade mark legislation. The applicant, Bavaria NV, is a family-owned company incorporated in the Netherlands that makes beer, among other beverages. It had unsuccessfully sought registration of its trade mark for beer and appealed to the Federal Court when its application was denied as the result of an opposition hearing. The trade mark included the word ‘Bavaria’ which was displayed prominently within a device mark and which also contained other words, ‘Holland Beer’.

The successful opponent of the original application for registration was the Bavarian Brewery Association which represents the interests of well over 200 Bavarian breweries, some of which have been in business for centuries. Its opposition to registration was based on numerous grounds as is the custom in trade mark practice but it is the discussion about geographical indications and the application of Section 61 of the Trade Marks Act 1995 (Cth) which is the focus of this posting.

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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 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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A recent Trade Marks Office decision that suspended three pending opposition proceedings in relation to trade mark applications made by Cadbury UK Limited for certain shades of purple has been overturned by the Federal Court.   A copy of this appeal decision can be read here(Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126 (1 August 2008).

Readers may recall that the decision of the Registrar’s delegate to put opposition proceedings on hold was reported by the Australian Trade Marks Law Blog in February.  Newcomers may want to refer to this article for a brief summary of events in the ongoing chocolate battle between Darrell Lea and Cadbury Schweppes.

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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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In Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 (26 June 2008), Justice Gordon's preamble points out the excessive costs and consumption of Court resources that have been incurred in the case as a consequence of incorrect identification of legal issues. She emphasises that “parties should not be encouraged to bring inapposite claims on the grounds that they are cheaper” because this can backfire. Here, the respondent sought a cheaper avenue for relief by bringing a non-use application before the Trade Marks Office as opposed to bringing a revocation action in the Federal Court. Justice Gordon ordered costs against the respondent for that part of the proceeding that had been misclassified.

Along similar lines, in the recently decided case of E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 (20 June 2008), discussed on the Australian Trade Marks Law Blog last week, Lion Nathan pleaded that their client had used ‘Barefoot Radler’ as its sign but wanted to argue at trial that the sign was ‘Barefoot Radler’ plus the device of a bare foot. The Court confined them to their defence as pleaded.

These cases highlight, in different ways, the importance of getting the pleadings right from the outset and show that the Court will hold parties responsible for such blunders.

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In Colorado Group Limited & Anor v Strandbags Group Pty Limited [2008] HCATrans 200 (23 May 2008), the Colorado Group failed to obtain special leave from the High Court to appeal the Full Court of the Federal Court decision reported in the Australian Trade Marks Law Blog article: Colorado Group fails on appeal - Full court messes with the Fink.

As a result, neither party now has exclusive use of the mark "Colorado" in relation to handbags, wallets and purses, and the register will be rectified.

Per Crennan J:

"The applicants seek special leave to appeal in a claim for trademark infringement. The principal defence of the respondent is a counter-claim for rectification of the register in respect of the applicants’ registration of the trademark "Colorado", which is a geographical name. The grounds upon which rectification is sought which are relevant to the present application are that the applicant is not the proprietor of its registered trademark. Alternatively, if it is the proprietor, the mark is not capable of distinguishing certain of the applicants’ goods.

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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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In Television Food Network, GP v Food Channel Network Pty Ltd [2008] FCA 378 (18 March 2008) counsel for the respondent, Food Channel Network Pty Ltd (FCN) sought leave of the Court to file two affidavits, one of which was only provided to counsel for the applicant, Television Food Network, GP (TFN) 10 minutes prior to Court resuming one morning during the trial. 

TFN objected to the admissibility of the affidavits in their entirety and made some of the following submissions:

• no explanation as to the lateness of the evidence had been provided;
• the proposed evidence sought to advance a new case for the respondent and contradicts earlier evidence; and
• admission of such evidence would seriously prejudice the applicant.

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The most recent development in a protracted legal battle between two chocolate heavy weights, Cadbury Schweppes and Darrell Lea, is a decision by the Trade Marks Office (copy available HERE) to suspend three pending opposition proceedings which relate to some trade mark applications made by Cadbury for certain shades of the colour purple.  The oppositions have been suspended pending final determination of a related passing-off proceeding in the Federal Court. 

Background (in Brief)

In February 2003, Cadbury commenced proceedings against Darrell Lea in the Federal Court of Australia claiming that Darrell Lea's use of a shade of purple in connection with its chocolate confectionary business amounted to conduct that was misleading and deceptive, and also constituted passing off ("the passing off proceeding").  For those who have, understandably, lost track of the course of these proceedings, a comprehensive summary of the numerous court decisions is provided by the Delegate at paragraph 50 of the present decision. The next stage in the passing off proceeding will be mediation likely to be followed by a further hearing before Heerey J., if it does not settle. 

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Australian applicants for United States trademarks should note a recent decision in the US: Rosenruist-Gestao E Servicos LDA, v. Virgin Enterprises Ltd., No. 06-1588 (4th Cir. Dec. 27, 2007) which held that a foreign company that has no US employees, locations, or business activities must produce a designee to testify at a deposition in the Eastern District of Virginia just because it filed a trademark application with the USPTO, which is located there.

As a result, a litigant in a US trademark dispute can compel an Australian witness (for example) to travel to the USA to give in-person deposition testimony "for use in any contested case" in the USPTO, such as an opposition proceeding to a trademark application.

A Memorandum by Fried Frank, who acted for the successful party in the Rosenruist case, summarises the position. It states:

"Non-U.S. business entities that file applications for United States registration of trademarks or service marks have long been required to “designate” a person “resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If no such designation is made, the Director of Patents and Trademarks, located in Alexandria, Virginia, U.S.A., is deemed by default to be the applicant’s designee for purposes of service of process." . . .

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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.