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

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In Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606   the applicant Mars Australia Pty Ltd (Mars) has manufactured, distributed, marketed and sold a bite-size confectionary called Maltesers in Australia since 1989. The respondent (Sweet Rewards) has imported, distributed and sold a chocolate covered confectionary product known as “Malt Balls” since about the middle of 2005, principally through Target (in orange jars) but also through and Kmart, Coles, Franklins, Priceline, BI-LO, IGA, Dimmeys and a number of other discount stores (in red jars). The word Maltesers does not appear on the Malt Balls packaging. They are delicious, make you fat and rot your teeth. If you are a film critic, you can hold them in your hand until slightly molten then hurl them at the movie screen. Or not. Anyway, the red jars and the Mars packaging looked like this:

 

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In Deckers Outdoor Corporation Inc. v Farley (No 2) [2009] FCA 256, Deckers Outdoor Corporation, responsible for the well known sheepskin boots sold under the ‘UGG’ brand, has been successful in its application for summary judgement for trade mark infringement of its composite trade mark No. 785466. The Court has postponed making an order with respect to compensatory damages until further supporting evidence is presented. 

As to its claims for declaratory and injunctive relief for copyright infringement, passing off and trade practices breaches Deckers was unsuccessful. Deckers has become renowned for aggressive enforcement of its intellectual property rights. In view of this positive finding of trade mark infringement, only time will tell whether it continues to pursue these other causes of action, particularly a damages claim for flagrant copyright infringement under Section 115(2) of the Copyright Act 1968 (Cth).

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In Sebel Furniture Limited v Acoustic & Felts Pty Limited [2009] FCA 6 (12 January 2009), the applicant (Sebel) is the Registered Owner of Trade Mark No 1054076 in respect of a shape kind of sign or shape device (Sebel’s trade mark). Sebel’s trade mark is registered in Class 20 in respect of plastic, moulded chairs without arms, also known as 'sidechairs'. The trade mark was registered with effect from 6 May 2005 and is subject to an endorsement that sub-section 41(5) of the Trade Marks Act 1995 (Cth) was applied meaning that when it was applied for, it was not sufficiently inherently distinctive to achieve registration on that basis alone, but that registration was granted because it was or would become distinctive through use. Sebel’s trade mark chair, known as the 'Postura', is widely used in educational institutions.

The respondent (Reed Furniture) recently commenced to import into Australia and to supply to the same educational market which, for many years, has been supplied with Sebel’s Postura, a moulded plastic chair known as the 'Titan'.

Sebel sought various injunctions based on allegations that the Titan chair infringed Sebel’s trade mark by using the shape in respect of which Sebel’s trade mark is registered and that Reed Furniture had engaged in passing off and in misleading and deceptive conduct within the meaning of s 52 of the Trade Practices Act 1974 (Cth) (TPA) by promoting, offering to supply and supplying the Titan chair. Sebel also sought an order to restrain Reed Furniture from making each of the following representations in trade or commerce in Australia in relation to chairs:

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In Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760, Justice Collier in the Federal Court in Brisbane has just handed down a judgment in a case alleging trade mark infringement and a breach of s52 of the Trade Practices Act 1974 (Cth) (TPA).

The registered owner of the trade mark ‘Bing!’ won its trade mark infringement action but was unsuccessful in its claims of breaches of the TPA and passing off which, in itself, is an interesting statement about the usefulness of registration compared to relying on passing off principles.

Bing! is registered in Class 9 for ‘Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector’. I think this means software for the legal profession and software for anyone else but the legal profession. The statement reminds me of the way that we can divide the world into two types of people, namely, those who divide the world into two types of people and those who don’t.

The trade mark owner’s primary business is for a Family Court document automation software package. It also has software packages for conveyancing. It calls its software ‘Bing!’

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In Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 (14 November 2008) the Full Federal Court has handed down a decision, in three separate judgments, that will make it easier for owners of well-known brands to establish their reputations in Australia.

The Full Court, in particular Justice Finkelstein (aka da Fink), made significant observations about the impact of indirect marketing techniques going as far as saying that these may be “better than direct marketing” for establishing reputation in cases of passing off and/or misleading and deceptive conduct under the Trade Practices Act 1974 (Cth) (TPA).

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In Two Men and A Truck Aust Pty Ltd v Three Men & A Truck Removals and Storage Pty Ltd & Anor [2008] FMCA 1333 (26 September 2008) [2008] FMCA 1333 the applicant, Two Men And A Truck Australia Pty Limited (Two Men And A Truck), has two Australian Registered Trade Marks, with a priority date of 3 April 2003 in class 39 for: “Transportation, packing and storage of goods including removalist services; transportation and storage of waste including rubbish removal; rental of storage containers”.  One is word mark No. 949361 for “TWO MEN AND A TRUCK” and the other, No. 949362, comprises the following device:

On 11 May 2007 the first respondent adopted the corporate name Three Men & A Truck Removals And Storage Pty Ltd (Three Men & A Truck) and placed an advertisement in the print edition of the Sydney Yellow Pages under the name or trade mark “Three Men & A Truck Removals and Storage Pty Ltd” in the category “Furniture Removals & Storage” as well as printed, issued and used business cards with the following representation of a truck:

Two Men And A Truck alleged that, by doing so, Three Men & A Truck engaged in conduct that was misleading or deceptive or likely to mislead or deceive in contravention of s.52 of the Trade Practices Act 1974 (Cth) and made false representations in contravention of s.53(c) of the Trade Practices Act,  passed off or attempted to pass off its services as having a connection with the applicant or its business and infringed the registered trade marks of the applicant under s.120 of the Trade Marks Act 1995 (Cth).

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 In Macquarie Bank Limited (ACN 008 583 542) and Another v. David Seagle [2008] FCA 1417(19 September 2008), the presiding Justice Jagot of the Federal Court in Sydney (unsurprisingly) held in favour of the applicants, a well-known Bank in Australia against the respondent, David Seagle, aka “Mr. Macquarie Westpac Bank”.

Macquarie had made an application for default judgement pursuant to Order 35A rule 3(2)(c) of the Federal Court Rules (Rules). The applicant had also successfully brought, inter alia, claims against the respondent under s. 52 of the Trade Practices Act 1974 (Cth) for engaging in misleading and deceptive conduct.

The respondent is a notorious cybersquatter in the Australian ‘domain name’ and intellectual property sector who has ‘priors’ for similar disputes in the Federal Court. There are a number of WIPO Arbitration and Mediation Centre Administrative Panel Decisions against him, for example see: Macquarie Bank Limited v Seagle [2005] FCA 1239 (15 August 2005) and the WIPO decision Westpac Banking Corporation v Sir Oxford University aka David Seagle Doc Seagle and Mr Oxford University WIPO Case No. D2003-0250. See also WIPO cases D2003-0374 and D2003-0890 (where Seagle was ordered to transfer the domain names macquarie-bank.com and macquariebank.net to the bank), Harvey Norman Retailing Pty Ltd v Oxford University, WIPO Case No. D2000-0944, The Chancellor, Masters and Scholars of the University of Oxford v DR Seagle t/a Mr. Oxford University, WIPO Case No. D2001-0746 and Imperial Chemical Industries PLC v. Oxford University, WIPO Case No. D2001-0292. There are others and I cannot be bothered, but somehow Mr Seagle can.

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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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Cadbury has lost the latest battle over the exclusive use of the colour purple on chocolate wrapping but, regrettably, the chocolate wars are probably still far from over. On Friday 11^th April, Justice Heerey in the Federal Court gave his judgment in respect of the ‘further trial’ of the action brought by Cadbury against Darrell Lea for having the temerity to use purple in some of its chocolate wrapping. (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8) [2008] FCA 470). The action was based on passing off and an alleged breach of s52 of the Trade Practices Act which prohibits corporations from engaging in conduct that is misleading or deceptive or which is likely to mislead or deceive.

A little bit of background to this latest decision is probably necessary for those who, for reasons only known to them, have failed to follow the fate of purple in Australian litigation. At the original trial in 2006, Justice Heerey found for Darrell Lea and held certain expert evidence from Cadbury inadmissible. While there was a lot of evidence that consumers associated purple with Cadbury chocolate, there was also a lot of evidence of uses by other chocolate makers of purple and many factors which distinguished Darrell Lea from Cadbury chocolate. For example, the words Darrell Lea written prominently on Darrell Lea chocolate were subtle hints to consumers that the chocolate in question was not Cadbury. Some consumers actually picked up on the point.

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In Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406 (31 March 2008) the success or otherwise of both the claim and the cross-claim turned on each party evidencing a sufficient reputation of its product amongst Australian customers by reference to the unregistered marks MONSTER and MONSTER ENERGY in the context of deciding whether there had been a passing off at common law or a contravention of s 52 of the Trade Practices Act 1974 (Cth) (TPA).

The applicant (Hansen) alleged that the adoption of the brand MONSTER ENERGY (the second biggest selling energy drink in the world, behind Red Bull), or its contraction MONSTER, for energy drinks by the respondents (Bickfords) conveyed a misrepresentation that the Bickfords product is the product of Hansen or is associated with Hansen. If not, then conversely the cross-claim required Bickfords to establish whether at the relevant time it had a sufficient reputation in Australia in the mark MONSTER ENERGY, or its contraction MONSTER to succeed in its own claim as against Hansen. The parties agreed that the similarities between the products could relevantly mislead or deceive for the purposes of the TPA and the tort of passing off.

Approach

The Court approached the question of the operation of s 52 of the TPA by requiring it to be established that a significant or substantial proportion of persons who would be potential customers within Australia would be likely to be misled.

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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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A recent decision of Tamberlin J in the Federal Court of Australia has provided some interesting insights into the legality (or otherwise) of parallel importing of trade marked goods. See Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 490

When it comes to parallel importing of trade marked goods or grey imports, a key provision in the Australian legislation is s123 of the Trade Marks Act (Cth) 1995. Section 123 provides that:

a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

Tamberlin J’s decision makes it clear that the onus is on the defendant to establish the existence of the necessary application of the trade mark or consent to the application of the trade mark by the trade mark owner. In addition, and more importantly, his obiter comments made it clear that it is not sufficient to demonstrate that another member of the trade mark owner’s corporate group applied the trade mark or consented to the relevant application.

The facts of the case are relatively straightforward. Dynamic Supplies acquired, via the United States, some printer drum units which were made by the Australian trade mark owner, Brother Industries Ltd, a Japanese company, (Brother Japan). Importantly though, Brother Japan did not place its trade mark on these printer drum units. Such products are known as ‘original equipment manufacturer’ products (OEM’s). The OEM’s acquired by Dynamic Supplies via the United States were sold in packaging using the Brother Japan trade marks and which purported to be Brother packaging. Tamberlin J found that, in fact, the packaging was counterfeit and that packaging was neither made by or with the consent of Brother Japan.

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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...

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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.

Similarly, section 177 of the Patents Act 1990 (Cth) prohibits false representations about the Australian Patent Office. Continue Reading...

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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.”