Trade Marks Update - List G Barristers · PDF fileTrade Marks Update ... Special mention – Paul Dwyer & “Paul’s Warehouse ... Keane CJ, Jagot and Yates JJ, upholding Gordon J:

Trade Marks Update

IPSANZ Seminar Melbourne – 30 November 2012

Ed Heerey, List G Barristers

Special thanks to Ben Gardiner, List G Barristers, for

invaluable assistance in preparing this presentation

Intellectual Property Laws Amendment (Raising the Bar) Act 2012

• Royal Assent: 15 April 2012

• Amendments to Trade Marks Act take effect from

15 April 2013


• Amendments to s 41 TMA as from 15/4/13:

• Explanatory Memorandum:

• Presumption of registrability was a policy objective of TMA

• Blount reversed presumption of registrability for s 41(5)-(6)

• Proposed amendments are intended to clarify that

presumption of registrability applies to s 41

• Intention is that if Registrar is equally unsure whether or not

TM is capable of distinguishing, doubt should be resolved in

applicant’s favour



• Explanatory Memorandum:

• Not intended to require that TM should “clearly not be

registered”

• Rather, “as with other grounds”, it is intended that the

balance of probabilities applies

• Amendments are not intended to alter key concepts of:

• “inherently adapted to distinguish”

• “capable of distinguishing”

• “does or will distinguish”

• TMs which are “sufficiently” inherently adapted to

distinguish on their own would not fall within new s 41(3) or

(4) and could not be rejected under s 41



• S 41 rearranged, and tests reformulated in the negative

• S 41(2) and (3) replaces current s 41(3) and (6):

• TM taken not to be capable of distinguishing if:

• TM is “not to any extent inherently adapted to

distinguish” the designated goods or services from

those of others; and

• “the applicant has not used the TM before the filing date

in respect of the application to such an extent that the

TM does in fact distinguish the designated goods or

services as being those of the applicant”



• S 41(2) and (4) replaces current s 41(3) and (5):

• TM taken not to be capable of distinguishing if:

• TM is “to some extent, but not sufficiently, inherently

adapted to distinguish” the designated goods or

services from those of others; and

• the TM does not and will not distinguish the designated

goods or services as being those of the applicant having

regard to the combined effect of the following:

• extent of inherent adaption to distinguish

• the use or intended use of TM by applicant

• any other circumstances


• Amendment to s 126 TMA as from 15/4/13:

• New s 126(2) – Court may award additional damages if

appropriate, having regard to:

• flagrancy of the infringement

• need to deter similar infringements

• conduct of the infringer:

• after the infringing act; or

• after being informed that it had allegedly infringed

• any benefit accrued to the infringer

• all other relevant matters

• Consistent with s 115(4) Copyright Act, s 122(1A) Patents Act


• Other key amendments to TMA as from 15/4/03:

• S 52 – prescribed form notice of opposition

• New s 52A – TM applicant may file notice of intention to defend

opposition

• New s 54A – opposed TM application lapses if applicant does

not file notice of intention to defend opposition within prescribed

time

• S 229 – TM and patent attorney’s privilege extended to

communications, records and documents made for the

“dominant purpose” of providing intellectual property advice

• Ss 134-139 – more detailed procedure for Customs seizure

• New s 134A – Customs CEO may permit objector or

designated owner to inspect seized goods



• Ss 145-149 – more detailed provisions for indictable and

summary offences, and stronger penalties for:

• Falsifying or removing registered TM: s 145

• Falsely applying registered TM: s 146

• Making a die etc for use in TM offence: s 147

• Selling, importing etc goods with false TMs: s 148

• New s 147A – indictable and summary offence for drawing or

programming a computer to draw a registered TM likely to be

used in the course of an offence

• New s 147B – possessing or disposing of things for use in TM

offence



• Ss 35, 56, 67, 83(2), 83A(8), 84D and 104:

• Both Federal Magistrates Court and Federal Court will have

jurisdiction to hear appeals from Registrar’s decisions on

acceptance, rejection, opposition, amendment, revocation

and removal for non-use

• New s 190(aa):

• Federal Magistrates Court added as a prescribed court

• No longer limited to the Federal Court and State and

Territory Supreme Courts

• Jurisdiction to hear infringement claims (s 125) and

revocation of registration (ss 86-88)

Special mention – Paul Dwyer & “Paul’s Warehouse”

• Paul’s Warehouse webpage:

“Paul's Warehouse Is Also The First Australian Sports Retailer To Parallel Import

Sporting Goods And Surfwear. Today We Import Famous Brands Like Havaianas,

Globe, Dc Shoe Co, Etnies, Hurley, Royal Elastics, Vans, Converse And Lots

More!.”

“Our Mission”:

" We Search The World For The Best Deals And Bring Them To Australia So That

We Can Sell Them To You At Substantial Savings. Our Commitment To Giving

The Consumer The Best Possible Price Will Never Be Weakened As We Strive To

Come Up With Unbeatable Deals On All Major Brands On A Regular Basis."Our

Mission

" We Search The World For The Best Deals And Bring Them To Australia So That

We Can Sell Them To You At Substantial Savings. Our Commitment To Giving

The Consumer The Best Possible Price Will Never Be Weakened As We Strive To

Come Up With Unbeatable Deals On All Major Brands On A Regular Basis."

Special mention – Paul Dwyer & “Paul’s Warehouse”

• Betts Group Pty Ltd v Paul's Retail Pty Ltd [2007] FCA 1983

• Betts Group Pty Ltd v Paul’s Retail Pty Ltd (No 2) [2010] FCA 1454

• Lonsdale Australia Limited v Paul’s Retail Pty Ltd [2012] FCA 584

• Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCA 724

• Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130

• QS Holdings Sarl v Paul’s Retail Pty Ltd [2011] FCA 853

• QS Holdings Sarl v Paul’s Retail Pty Ltd (No 2) [2011] FCA 1038

• Brooks Sports, Inc v Paul's International Pty Ltd (No 1) [2011] FCA 999

• Brooks Sports, Inc v Paul’s International Pty Ltd (No 2) [2011] FCA 1000

• Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) [2010] FCA 1162

• Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 4) [2011] FCA 201

• Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51

Paul’s Retail v Sporte Leisure (2012) 202 FCR 286

• TMs GREG NORMAN and shark logo, registered for garments

• TMs licensed to an Indian company for purposes of manufacture and

distribution of goods bearing the TMs within India

• Licensee had supplied such goods to companies outside of India,

contrary to an express prohibition of the licence agreement

• The goods were ultimately purchased from one of those companies by

Paul’s Retail, which imported and sold the goods in Australia

• Owner of TMs sued Paul’s Retail for TM infringement

• Paul’s Retail claimed defence under s 123 TMA


• S 123 TMA:

• “In spite of section 120, 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.”

• Nicholas J, at trial (2010) 275 ALR 258, rejecting s 123 defence:

• Owner of TMs could not have consented to the application of its

TMs to goods by the Indian licensee in circumstances where:

• TMs had been licensed on the condition that goods bearing

the marks not be supplied outside of India; and

• licensee knew at the time of applying TMs that the goods

would be supplied outside of India


• At trial, Paul’s conceded it used TMs “as TMs” under s 120(1)

• On appeal, Paul’s sought leave to withdraw that concession, and raise

new arguments that it did not infringe under s 120(1) because:

• the articles were “genuine goods”

• non-infringing parallel importation (Champagne Heidsieck)

• alternatively, Paul’s did not use TMs “as TMs” because it it did

not use TMs as a bade of origin to identify itself

• alternatively, TM owner had not proven that goods were

unlicensed

Jacobson, Yates and Katzmann JJ:

• No leave to withdraw concession made at trial

• Paul’s argument contrary to Aickin J in Pioneer

• Champagne Heidsieck enshrined in s 123; no application to s 120


Jacobson, Yates and Katzmann JJ:

• Nicholas J did not err in taking into account the territorial restrictions

imposed on Indian licensee

• Nicholas J’s decision is consistent with Full Court’s decision in

Montana Tyres

• In Montana Tyres, TM owner gave consent to the application of TM

• Here, unlike the facts of Montana Tyres, GREG NORMAN TMs were

applied without the consent of the TM owner

Lonsdale Australia v Paul’s Retail [2012] FCA 584

• LONSDALE TMs owned by Lonsdale Sports Ltd (LSL) until June 2011

• June 2011: LSL assigned TMs to Lonsdale Australia

• LSL related to Lonsdale Australia: same ultimate owner

• LSL remained owner of TMs in Europe

• Dec 2011-Apr 2012: Paul’s imported and sold LONSDALE goods

• TMs had been applied in China by LSL’s licensee

• terms of license allowed manufacture in China, but limited

sales to Europe

• Lonsdale Australia sued Paul’s for TM infringement

Lonsdale Australia v Paul’s Retail [2012] FCA 584

Gordon J, at trial, finding infringement and no defence under s 123:

• Australian Parliament does not have power to provide exclusive right

to use a TM in relation to goods worldwide

• LONSDALE TMs separately owned in Australia and Europe

• Correct question:

• whether Paul’s infringed Lonsdale Australia’s rights in Australia

• not whether goods bore TM applied under license of LSL

• Importation and sale by Paul’s was a use in breach of s 120

• Champagne Heidsieck does not apply to s 120

• No evidence Lonsdale Aust played any role in applying TMs to goods

• No evidence of any step or omission by Lonsdale Aust that could be

considered consent by it to application of TMs to the goods

Paul’s Retail v Lonsdale Australia [2012] FCAFC 130

Keane CJ, Jagot and Yates JJ, upholding Gordon J:

• Not necessary to conclude whether s 123 applies to goods made in

China under licence from LSL, because goods were not made under

the terms of the licence

• Licence limited to making goods for sale in Europe

• The ordinary meaning of s 123 cannot be confined by reference to

competing theories such as:

• the doctrine of “exhaustion of rights”

• the doctrine of “territoriality”

• S 123 is a question of fact: was the TM applied with owner’s consent?

• Paul’s did not prove Lonsdale Australia’s consent

• Champagne Heidsieck does not fill the gap in Paul’s case

Paul’s Retail v Lonsdale Australia [2012] FCAFC 130

Keane CJ, Jagot and Yates JJ, upholding Gordon J:

• Confirmed that:

• absent s 123, the mere sale of goods bearing TM would infringe

• importing goods bearing TM as a trader is use of the TM

• “The surest guide to the nature and extent of the proprietary right

created by the registration of a trade mark under the Act is the text of

the Act.

• In that regard, the language of ss 120 and 123 of the Act leaves little

room for doubt that an importer who sells goods which bear the same

marks as have been registered as a trade mark under the Act is liable

to an action for infringement by the registered owner if those marks

were not applied by the registered owner or with its consent.”

Facton Ltd v Toast Sales Group [2012] FCA 612

• Toast conducted short term “pop-up”

clothing clearance sales

• Toast used G-STAR and other TMs

in promotional materials

Middleton J:

• Toast’s retailing clothing services are

“closely related” to registered clothing goods

• But Toast’s advertising is not use of

G-STAR “as a TM” for retailing services

• Poster advertises a transient sale, with

three brands: TM refers to goods, not services

Facton Ltd v Toast Sales Group [2012] FCA 612

• Some of the G-STAR goods sold by Toast were sourced from a Greek

company Pantelis

• Contract between G-Star and Pantelis that Pantelis would not sub-

distribute goods to companies not authorised by G-Star

• G-Star argued s 123 does not apply, following Sport Leisure v Paul’s

Middleton J:

• S 123 does apply, present case distinguishable from Sport Leisure

• S 123 determined at time TM is applied

• G-Star admitted that TMs were applied with TM owner’s consent

• Distinguish Sporte Leisure where maker knew it lacked consent

• Complete defence to TM infringement

Tivo Inc v Vivo Corporation [2012] FCA 252

• TiVo had sold video recorders in US since 1999 with novel functions:

• freezing and rewinding live TV

• recommending shows on the basis of other show watched

• 1999: TiVo TM registered in Australia

• Significant sales and high profile in US

• many references in popular culture, eg Sex and the City, Bee Movie

• Spillover reputation in Australia through press articles and popular

culture?

• TiVo not launched in Australia until July 2008

• However, some Australian enthusiasts had already bought TiVo units

from US and hacked them to work in Australia

Tivo Inc v Vivo Corporation [2012] FCA 252

• Vivo began selling VIVO televisions in Australia in 2007

• Vivo applied to register VIVO TM in February 2008

• Prior to launch of TiVo in Australia in July 2008

• Tivo sued Vivo for revocation of VIVO TM, and infringement of TiVo TM

• Dodds-Streeton J:

• Rejected Vivo’s evidence of no prior knowledge of TiVo

• Found reputation of TiVo in Australia before VIVO TM application

• Found deliberate intention by VIVO to benefit from reputation in TiVo

• Found VIVO deceptively similar to TiVo

• Revoked VIVO TM under ss 44 and 60

• Found infringement of TiVo upon revocation of VIVO

Vivo Corporation v Tivo Inc [2012] FCAFC 159

Nicholas J (Dowsett J agreeing) finding error but dismissing appeal:

• Evidence of Vivo’s expert linguist should have been given weight

• But that evidence did not make allowance for imperfect recollection

• Evidence of confusion in this case should not have been given weight

• Some other factor may explain confusion by sales staff

• Trial J’s finding of no visual similarity not challenged on appeal

• But oral use of TM is significant in this case

• Real danger of confusion for consumers speaking with sales staff:

• Strong phonetic similarity between TIVO and VIVO for consumers

with imperfect recollection of TIVO

• S 44 decision upheld - unnecessary to consider s 60 and reputation in

Australia

Vivo Corporation v Tivo Inc [2012] FCAFC 159

Keane CJ, also finding error but dismissing appeal:

• Phonetic similarity of TIVO and VIVO is sufficient to give rise to a real

danger of confusion

• Agreeing with Nicholas and Dowsett JJ:

• The trial Judge erred in taking Vivo’s intention into account on

deceptive similarity – Tivo did not rely on such intention at trial

• Disagreeing with Nicholas and Dowsett JJ:

• Great weight should be placed on the evidence of confusion of sales

staff

• If sales staff are confused, there is a reasonable probability of

confusion by consumers

• Decision under s 44 upheld, no consideration of s 60

Austin Nichols & Co v Lodestar Anstalt (2011) 90 IPR 310

• Lodestar owned TM WILD GEESE for alcoholic beverages

• Product concept: WILD GEESE Irish whiskey

• Named after Irish soldiers of fortune fighting for France from

1691 to WW2

• Austin made and sold WILD TURKEY bourbon whiskey

• Austin had TM application for WILD GEESE WINES

• Austin sought removal of Lodestar’s WILD GEESE TM

• s 92(4)(b): 3 years non-use admitted by Lodestar

TMO:

• TM removed for wine, fortified wine and wine based spirits

• Lodestar appealed to Federal Court


Cowdroy J, finding Austin is “person aggrieved”:

• Health World requires liberal construction of “person aggrieved”

• Austin’s and Lodestar’s “trade rivalry” encompasses alcoholic

and non-alcoholic drinks

Cowdroy J, finding no obstacles to use of TM for s 100(3)(c):

• no causal link between Lodestar’s involvement in ongoing

worldwide litigation over WILD GEESE and specific non-use of

TM in Australia

• non-use in Australia resulted from Lodestar’s deliberate decision

to develop other international markets in priority to establishing

its market in Australia

• no relevant obstacle caused by difficulties encountered in

sourcing and promoting WILD GEESE whiskey


Cowdroy J, exercising discretion under s 101(3) to allow Lodestar’s

registration to remain:

• Lodestar’s use of WILD GEESE TM in Australia was not until 3

years after non-use period - weighs heavily against Lodestar

• substantial use by Lodestar of WILD GEESE TM in other

jurisdictions during and after non-use period

• international profile of WILD GEESE whiskey products is

relevant but of limited weight unless profile is sufficient to raise

possibility of confusion in Australia if TM is removed

• Lodestar did not abandon its intention to use WILD GEESE TM

• Lodestar’s use of WILD GEESE both in Australia and

internationally requires that TM remain on register

• confusion might result if it were removed

Austin Nichols & Co v Lodestar Anstalt (2012) FCR 490

• Jacobson, Yates & Katzmann JJ:

• upheld appeal from Cowdroy J

• ordered removal of WILD GEESE TM

• Cowdroy J erred in finding that WILD GEESE TM had acquired

a reputation and profile overseas such that confusion might

result if it were to be removed from the register

• insufficient evidence for finding reputation in Australia

• source of and reason for the postulated confusion not

identified

• Lodestar had failed to discharge its onus to show that

confusion would, or could, result from removal of TM

Austin Nichols & Co v Lodestar Anstalt (2012) FCR 490

• Jacobson, Yates & Katzmann JJ:

• other grounds of appeal rejected

• Cowdroy J did not err in exercising the discretion under s

101(3):

• by taking into account the TM owner’s interests as well as

the public interest

• by considering Lodestar’s use and intentions after the

statutory 3-year non-use period

Boyd v Wild Hibiscus Flower Co PL (No 2) [2012] FCA 74

• Boyd’ s registered TM: LIMEBURST for

fresh fruit; used for finger limes

• sought interlocutory injunction

restraining Respondents from using

FRESHBURST for preserved fruit

• Foster J:

• Case for deceptive similarity is

“at best, weak”

• Fresh fruit and preserved fruit are not the same for s 120(1)

[no consideration of similar goods for s 120(2)]

• No prima facie case, application for injunction dismissed

Fry v Sports Warehouse (No 2) (2012) 201 FCR 565

• 22/12/06: Fry applied to register for “retailing of goods (by any means)”:

• Opposed by SW: ss 44 and 58A

• TMO: registration refused under s 44, TM deceptively similar to SW’s prior

pending TM application for TENNIS WAREHOUSE

• 22/12/09: Fry appealed to Federal Court

• 25/6/10: Kenny J in Sports Warehouse Inc v Fry Consulting Pty Ltd (2010)

186 FCR 519 rejected SW’s TM app TENNIS WAREHOUSE

• Thus, SW’s TENNIS WAREHOUSE TM application no longer pending

• S 44 no longer available, opposition pressed instead in Federal Court under

ss 41, 60 and 62A


Dodds-Streeton J on s 41 - capacity to distinguish:

• Fry’s TM is inherently capable of distinguishing under s 41(3)

• Unnecessary to consider s 41(5)

• if s 41(5) had applied, evidence would not have supported registration

• Use of TM below was not use of the applied for TM, for purposes of s 41(5)

• tagline was a prominent and consistently located feature of the TM

actually used before the application date

• tagline was absent from TM applied for by Fry

• moreover, actual use was not extensive


Dodds-Streeton J on s 60:

• Evidence did not establish that SW had used TENNIS WAREHOUSE TM on its

own (without “TW” device) in advertisements before application date

• No evidence that SW had acquired a reputation amongst any consumers or a

significant section of the public in Australia through the use of its domain

names www.tenniswarehouse.com or www.tennis-warehouse.com

• Therefore no basis to find a reputation in TENNIS WAREHOUSE as pleaded

http://www.tenniswarehouse.com

http://www.tennis-warehouse.com




Dodds-Streeton J on bad faith under s 62A TMA:

• First substantive consideration of s 62A by the Federal Court

• Detailed review of UK and ATMO decisions

• Applicable principles:

• Bad faith must be at the time of the application (here, 22/12/06)

• Opponent bears onus of proving bad faith

• Bad faith does not require, although it includes, dishonesty or fraud

• It is a wider notion, potentially applicable to diverse species of conduct

• Relevant to consider both:

• Applicant’s subjective intentions; and

• the standards of acceptable commercial behaviour observed by

reasonable and experienced persons in a particular area is


Dodds-Streeton J on bad faith under s 62A TMA:

• mere negligence, incompetence or a lack of prudence to reasonable and

experienced standards would not, in themselves, suffice

• the concept of bad faith imports conduct which, irrespective of the form it takes,

is of an unscrupulous, underhand or unconscientious character

• Mere awareness that an overseas company owns the mark and is using it or

intending to use it in Australia is insufficient to constitute bad faith

• The question is whether, in all the particular circumstances, the applicant’s

knowledge was such that his decision to apply for registration at the relevant

date would be regarded as in bad faith by persons adopting proper standards

• Put another way: whether reasonable and experienced persons in the field

would view such conduct as falling short of acceptable commercial behaviour


Dodds-Streeton J:

• Fry’s application not in bad faith in these circumstances:

• In Dec 2004, Fry unequivocally indicated willingness to cease using

TENNIS WAREHOUSE if SW provided evidence of entitlement

• SW undertook to do so, but failed to provide any such evidence and

remained silent until contacted by Fry two years later

• Fry did not acknowledge SW’s ownership of TM in Australia

• From Dec 2004 to Dec 2006, in the absence of any further objection or

contact from SW, Fry proceeded to develop his business using TENNIS

WAREHOUSE with AUSTRALIA and his tennis ball logo

• SW failed to discharge burden of proving bad faith

Facton Ltd v Mish Mash Clothing PL (2012) 94 IPR 523

• Applicants’ registered TMs (in respect of clothing, footwear etc):

• TMs used by Respondents (amongst others):


• Jessup J: following TMs are deceptively similar:

v


• Jessup J: BUT following TMs are NOT deceptively similar:

v

G-STAR RAW DENIM

v


• Jessup J:

• franchising services are not “closely related” to clothing - s 120(2)(d)

• “The fact that franchising services may be provided to those who sell

clothes is no more relevant than, for example, the fact that plumbing

services might be provided to those who sell clothes”

1-800-Flowers.Com Inc v Registrar (2012) 201 FCR 488

• Applicant has owned reg TM since 1998

• 6 June 2005: Flowerscorp PL applied for 1300 FLOWERS

• 10 Nov 2005: Applicant applied for

• 11 Oct 2007: that application accepted

• 2008-2010: Flowerscorp applied for 9 more 1300 FLOWERS TMs

• 10 Dec 2010: Applicant applied for for broader

services

• Applicant received positive assessment under “Headstart” service

• Flowerscorp complained to TMO about inconsistency in examination

• TMO internal review: decision to revoke acceptance of

1-800-Flowers.Com Inc v Registrar (2012) 201 FCR 488

• Applicant appealed delegate’s decision to revoke acceptance

• Appeal under Administrative Decisions (Judicial Review) Act 1977:

• delegate failed to take into account relevant considerations

• delegate’s decision so unreasonable that no reasonable person

could have exercised the power in this way

Katzmann J, dismissing appeal:

• None of the grounds under the ADJR made out on the facts

• Even if they had been, Court would exercise discretion to refuse relief

• Delegate’s decision was not determinative of the Applicant’s rights

• Delegate did not reject the applications - Applications will be examined

afresh and Applicant can put all of its concerns before the examiner

• There is an adequate administrative remedy, so Court won’t intervene

UCP Gen Pharma v Mesoblast (2012) 95 IPR 562

• UCP owns reg TM REVASC for pharmaceuticals, but has never used

• Mesoblast applied successfully for removal: 3 years non-use, s 92(4)(b)

Jessup J, upholding appeal:

• Non-use not due to “obstacles” so as to retain registration: s 100(3)(c)

• But general discretion ought to allow TM to remain

• Reasonable to give priority to establish REVASC in European market

• All necessary approvals in place for Australian launch

• Directed to very narrow market: hip and knee surgeons

• REVASC referred to in professional journals (albeit buried in footnotes)

• Applicant’s interests in keeping TM outweigh any prejudice to public or

other parties

• Leave to appeal refused by Middleton J: [2012] FCA 509

Edgetec International v Zippykerb [2012] FCA 281

• Edgetec’s TM: Kwik Kerb for concrete edging machines

• Reeves J:

• Kwik Kerber, Kwik Kerb er and Kwik Kerbing all substantially

identical to Kwik Kerb

• Kwik Kerb TM infringed by:

• Substantially identical domain names eg www.kwikkerbing.com

which redirected potential customers to Zippykerb website

• References on website to “ZIPPYKERB – Kwik Kerber”

• Immaterial that website disclaimed association with Kwik Kerb:

“To be clear: We are NOT KwikKerbTM We do not want to be

associated with Kwik Kerb in any way.”

http://www.kwikkerbing.com

Tricarico v Dunn Bay Holdings [2012] FCA 271

• Dunn Bay applied 9 Feb 2009 for TM: MALTMARKET BAR & KITCHEN

for services for providing food and drink etc

• Name of tavern in Dunsborough, WA, since Aug 2009

• Registration opposed by Mr Tricarico

• Proprietor of MALT SUPPER CLUB, Mt Lawley, WA

• opened Nov 2010 but advertised since Dec 2009

• s 44: prior TMs:

• MALT LOUNGE filed 7 Jan 2008

• MALT SUPPER CLUB filed 8 May 2008

• TMO: not deceptively similar, opposition dismissed

• Also dismissed ground of opposition under s 41


• Mr Tricarico appealed to Federal Court

• No appearance by Dunn Bay

McKerracher J:

• Dunn Bay has not used

TM applied for:

MALTMARKET BAR

& KITCHEN

• Rather, has used MALT

logo as depicted:

(MARKET appears

vertically within letter L)


McKerracher J upholding appeal and opposition:

• s 59 opposition established: no intention to use TM

• TM as used by Dunn Bay obscures MARKET to the point of difficulty in

detection

• substantially affects the identity of TM

• MALTMARKET BAR & KITCHEN TM was incorrectly filed

• it did not reflect actual use or intended use

• Unnecessary to consider opposition under ss 42 and 44

Australian Postal Corp v Digital Post Australia (2012) 96 IPR 532

• APC owns registered TM AUSTRALIA POST for services including

electronic mail communications services

• Alleged TM infringement by DIGITAL POST AUSTRALIA for digital mail

services

Marshall J:

• TMs not deceptively similar due to prefix DIGITAL and reversed order of

AUSTRALIA and POST

• Cited Cooper J in Health World 64 IPR 495:

• INNER HEALTH PLUS not deceptively similar to HEALTHPLUS

• Essential element of DPA’s TM is DIGITAL POST, conveys meaning of

mail delivered in digital form


• Lack of deceptively similarity even more apparent in view of surrounding

circumstances:

• difficult to imagine that anyone competent with computer technology

will doubt that DIGITAL POST AUSTRALIA is separate and distinct

from AUSTRALIA POST

• AUSTRALIA POST is entirely descriptive but has become distinctive

and iconic through extensive and prolonged use

• potential customers will perceive and pay attention to even slight

changes to the TM

• Conclusion not altered by APC’s expert or survey evidence

• Should have been confined to potential users of digital mail

• Obiter: DPA also entitled to defences for good faith use of its own name

and description of services: s 122(1)(a) and (b)


• Full Federal Court appeal pending

Australian Health (t/a Sanitarium) v Irrewarra Estate (2012) ALR 101

• GRANOLA registered TM since 1921 for cereals

• Sanitarium alleged TM infringement by Irrewarra by sale of:


Jagot J, finding no infringement because Granola not used as a TM:

• Necessary to consider the totality of the packaging

• Granola is inherently suggestive of a grain product

• Granola appears as part of product description:

• “ALL NATURAL HANDMADE GRANOLA”

• Granola not prominent, relative to Irrewarra TM

• Unreality to Sanitarium’s argument that Granola is only descriptive in

North America, in view of modern international cultural exchanges

• Australian dictionaries indicate descriptive meaning in Australia

• In any event, ALL NATURAL HANDMADE GRANOLA not substantially

identical nor deceptively similar to GRANOLA


• No reference by Jagot J to “Crunchy Granola Suite” by Neil Diamond

Mantra IP v Spagnuolo (2012) 96 IPR 464

• Mantra applied for TM: Q1 for accommodation services etc

• Spagnuolo opposed

• TMO upheld opposition under s 43: (2010) 90 IPR 413

• rather than being a badge of origin for Mantra’s IP services, Q1 has

a geographical connotation relating to the Q1 tower in Surfers

Paradise

Mantra IP v Spagnuolo (2012) 96 IPR 464

• Mantra appealed to Federal Court

Reeves J, upholding appeal and dismissing opposition:

• Q1 is inherently adapted to distinguish Mantra’s services

• No inherent connotation in Q1, thus no basis for s 43 opposition

• Fact that Q1 has become well-known as name of that building is a

circumstance extrinsic to the TM, not inherent

• Use of Q1 not contrary to law (s 42 TMA and s 18 ACL)

• Mantra is owner of TM – no break in chain of title from first user

Winnebago Industries, Inc v Knott Investments [2012] FCA 785

• Winnebago is name of a county, river and local Native American tribe in

Iowa, USA

• Winnebago Inc making recreational vehicles (RVs) since 1960s

• 1972-3: Winnebago Inc registered WINNEBAGO TMs in USA

• Winnebago Inc has sold RVs in US, Canada and Europe

• Until 2010, Winnebago Inc had not exported RVs to Australia, but since

then has expressed an interest in doing so

• Sometime between 1978 and 1982 (disputed), Knott began making

WINNEBAGO RVs in Australia

• 1985: Winnebago Inc put on notice of Knott’s use of WINNEBAGO

• 1992: “Settlement Agreement” between Winnebago Inc and Knott

• 1997: Knott registered WINNEBAGO TM in Australia

Winnebago Industries, Inc v Knott Investments [2012] FCA 785

• 2010: Winnebago Inc demanded that Knott cease using WINNEBAGO

• Commenced infringement proceeding 25 years after knowledge of

Knott’s use of WINNEBAGO

Foster J, upholding Winnebago Inc’s claim:

• Winnebago Inc enjoyed reputation in Australia as at 1982

• Best evidence of reputation is that Knott chose to hijack it

• Knott has committed passing off and misleading conduct

• Knott’s TM should be cancelled under s 60

• Rejected defences of consent, authorisation, estoppel, laches,

acquiescence and delay

• 1992 Settlement Agreement reserved Winnebago Inc’s rights and

left matters as they stood until Winnebago Inc wished to sue

Millennium v Kingsgate (2012) 97 IPR 183

• Millennium applied for TM for hotel services etc:

• Kingsgate owns prior registration for:

• Kingsgate’s opposition upheld: (2011) 94 IPR 277

• Millenium appealed to Federal Court

Jacobson J: Not deceptively similar

Millennium v Kingsgate (2012) 97 IPR 183

Jacobson J: Not deceptively similar

• Must be cautious of characterising

words as essential features of TM

• 5 bar logo is a prominent part of Millennium's TM

• Consideration of hotel bookings by telephone and internet searches by

use of “Kingsgate” fails to take into account all the relevant

circumstances; overlooks the way TMs will indicate badge of origin

• “In most instances, the preliminary steps to the booking will include a

search for the telephone number or the website. In either instance, the

person making the search is likely to see the mark displayed.”

• Travel agents may be expected to recognise the differences of TMs

• Differences of TMs would be readily apparent to ordinary persons

• In any event, Millennium established honest concurrent use

ATMO Decisions

Trade Marks Office decisions

Bad faith – s 62A

NSW Squash Ltd v Carin Clonda [2012] ATMO 71

• Applicant former officer of Opponent – application “fell short of

acceptable commercial behaviour”

Insufficiently distinctive – s 41

CLUB COFFS

Class 41: Arranging of entertainment etc

Class 43: Arranging for the provision of drink etc

Coffs Ex-Services Memorial & Sporting Club Ltd v Coffs Harbour

Catholic Recreation & Sporting Club Limited [2011] ATMO 118


TOTALPATENT

Online searchable patent database

Reed Elsevere Properties, Inc [2012] ATMO 46


SOLIGA FOREST HONEY

Honey

Himalaya Global Holdings Ltd [2012] ATMO 19


Beer, fruit juices, soft drinks etc

Name of large city in China – reasoning in Colorado applied.

Harbin Brewing Co., Ltd [2012] ATMO 48


THE WEATHER CHANNEL Class 35: Advertising and promotion services,

Class 38: Telecommunication services

Class 41: Entertainment and education services including providing

entertainment content and information using websites and online chat

rooms

The Weather Channel Inc v XYZnetworks Pty Ltd [2011] ATMO 116

NB the mark was considered to be sufficiently distinctive for

registration in classes 9, 16, 18 and 25 (none of these is directly

related to electronic media).


ATTIC LADDERS

Ladders that fold into ceiling spaces

Attic Ladders Pty Ltd v Kimberley Plastics Pty Ltd [2012] ATMO 36


Class 19: Building materials etc

Class 21: Glassware etc

Class 42: Technical consultancy in the field of glass making etc

Saint-Gobain Glass France [2011] ATMO 115


Class 12: Fork-lift trucks and conveyors (pallet trucks)

Pramac S.P.A [2011] ATMO 125


SLEEP TEA

Non-medicated tea beverages


HIMALAYA PURE HERBS

Pharmaceutical substances etc



DOCid

Bar code readers, electronic tags for goods, data processing equipment etc

OILID Pty Ltd [2012] ATMO 15


MAKE YOUR JOB EASY! Multiple classes of goods and services – relating to rental of equipment

Kennards Hire Pty Limited [2012] ATMO 39


FREE BARS

Chocolate (amongst other things in class 30)

Kraft Food Australia Pty Ltd v Mars Australia Pty Ltd [2012] ATMO 51

Sufficiently distinctive – s 41

Electronic household machines etc

LG Electronics Inc. v BSH Bosch und Siemens Hausgerate GmbH [2012] ATMO

68

Contrary to law – s 42(b)

OLYMPIC

Class 2: paints, varnishes etc

Use of the trade mark would incur a breach of section 36(1) of the Olympic Insignia Protection Act 1987 (Cth):

(1) A person, other than the AOC, must not use a protected Olympic expression for commercial purposes.

Australian Olympic Committee, Inc. v PPG Architectural Finishes, Inc. [2012]

ATMO 13

Not contrary to law or likely to mislead / deceive: ss 42 & 43

The “dead hand of legalism” should not “deny the fact that a group of men met for the purpose of playing football in 1858”.

Ross Smith v Australian Football League [2012] ATMO 20

Registration sought in several classes relating to football and other categories. Opponent claimed that logo carried representation that MFC was established in 1858 when in fact it was established in 1859. Evidence showed formal incorporation was in 1859 – but HO not satisfied that MFC’s claim to have been established in 1858 is factually wrong.

Substantially identical TMs

NATURE VALLEY v NATURE’S VALLEY

General Mills, Inc v Maria & Nikitas Chritofis [2012] ATMO 59

Not substantially identical TMs

v

D & M Group Pty Ltd v Cairns Airport Pty Ltd. [2012] ATMO 22

Deceptively similar TMs - words

BodyFit v Fit de Body

AB SCA Finans and SCA Hygeine Products AB v Uni-Charm Kabushiki Kaisha

[2012] ATMO 63


MY CLUB COFFEE v THE COFFEE CLUB

Coffee services

The Coffee Club Pty Ltd v Caffco Industries Pty Ltd [2011] ATMO 55

GASEX v GAS-X

Pharmaceutical substances


Deceptively similar TMs

LIV.52 v

Pharmaceutical substances



RED HAWK v

Beverages including mineral water

Red Bull GmbH v Chia Khim Lee Food Industries Pte Ltd [2012] ATMO 7


v

& &

DICK VAN PATTEN’S

NATURAL BALANCE NATURAL BALANCE

Pet foods etc

Prime Foods Exports Pty Ltd Natural Balance Pet Foods Australia Pty Ltd v Natural

Balance Pet Food, Inc [2012] ATMO 47


v TORO ROJO

&

CRAZY BULL

Non-alcoholic beverages etc

Red Bull GmbH v Javier Abollado Bris and Myriam Mugica Amilibia [2012] ATMO 18


v NEXT IP

DISTRIBUTION

Telecommunication services etc

Telstra Corporation v Next IP Distribution Pty Ltd [2012] ATMO 69


v

Clothing, footwear, headwear Clothing

The Polo/Lauren Company LP v Megan Philip and Rowena Sylvester [2012] ATMO 45


•

SANTOS and v

Cooking apparatus incl coffee machines

Santos Food Company Pty Ltd v SANTOS (Societe Par Actions Simplifiee)

[2011] ATMO 119


PICROLAX v PICOLAX

Pharmaceutical products



•

SUPERSTOP v

Retailing, wholesaling and distribution of automotive parts and accessories

v Parts and fittings vehicles including disc brake pads etc

Automotive Product Licencing Pty Ltd v Superstop Brake & Clutch Pty Ltd

[2012] ATMO 4


•

v SOHO

Classes 32 and 33 – beer, other beverages, wine etc

Pernod Ricard S.A. trading as Pernod Ricard Europe v Soho Wine Company

Limited [2011] ATMO 111


•

v

Wide variety of classes relating to luxury goods

Guccio Gucci SpA v Qui Chen [2011] ATMO 126


v TWITTER

Internet advertising services v Telecommunications, email etc

Twitter Inc. v Jason Boyce [2012] ATMO 31


V

DVDs, education courses etc Retail clothing shop services,

exercise classes etc

Preggi Central Pty Ltd v Preggi Bellies Pty Ltd [2012] ATMO 67


• REV3 ENERGY

v REV

• & &

REV3 ENERGY SURGE

Non-alcoholic beverages

excl those containing milk Aerated mineral waters

etc

USANA Health Sciences Ltd [2012] ATMO 28


v PANDA

Silicon chips, integrated circuits etc v Scientific instruments etc

Yingli Group Co., Ltd. [2012] ATMO 35

Deceptively similar TMs – words

•

AUSTRALIA

QUEST GROUP v QUEST Class 16: paper, cardboard etc Class 16: brochures etc

CMP Investments Pty Ltd v Let?s Talk Entertainment Agency Pty Ltd [2012]

ATMO 72

Deceptively similar TMs – words

•

ADVANTAGE TECHNICAL RESOURCING

ADVANTAGE STAFFING

v ADVANTAGE PARTNERS

ADVANTAGE RESOURCING

ADVANTAGE PROFESSIONAL

Class 35: Business information, advisory and consultancy services etc

Advantage Resourcing Europe B.V. [2012] ATMO 40

Not deceptively similar TMs

v

Computer peripheral devices etc v Computer parts & accessories

Belkin International Inc. v Belfan LLC. [2012] ATMO 26

Not deceptively similar TMs - words

v VOGUE

Clothing

Advance Magazine Publishers Inc v Provogue (India) Pty Limited [2012]

ATMO 33


ENERGIE v

Clothing, footwear, headwear

Sixty International SA v New Balance Athletic Shoe, Inc [2012] ATMO 37


CALPLUS v CALPIS

CALPICO Milk & milk products Mineral waters, milk products

Calpis Co., Ltd v ALDI Foods Pty Ltd [2012] ATMO 44


TIMBERTOWN v TIMBERLAND

Clothing, footwear, headwear Clothing, footwear, headwear

The Timberland Company v Alison Waite [2012] ATMO 66


PIT BULL BULL

ENERGY DRINK v &

RED BULL Non-alcoholic beverages etc

Red Bull GmbH v Hip Hop Beverage Corporation [2012] ATMO 17


CROWN DIPLOMA v DIPLOMATICO Beer Alcoholic beverages

Barberton Consultores E Servicos LDA v Foster’s Australia Limited [2012]

ATMO 73


DEVA v DELVA

Hair care products Hair care products

Chris De Lorenzo v Deva Concepts LLC [2012] ATMO 55


•

OEMSTAR

& v

OEM6

Global positioning and navigation systems and devices v aircraft

maintenance services

NovAtel [2012] ATMO 42


•

v KOMPRESSOR

Electric household machines etc v electric washing machines, vacuum cleaners etc

LG Electronics Inc. v BSH Bosch und Siemens Hausgerate GmbH [2012] ATMO 68


•

v

&

HIMALAYAN SPRING MINERAL WATER – WATER

CLOSEST TO HEAVEN

Mineral water

Mount Everest Mineral Water Limited [2012] ATMO 65


•

MEDIPURE v MENOPUR Dietetic substances for medicinal use v fertility stimulating hormone

Ferring BV v Pure Health Direct Pty Ltd [2011] ATMO 99


•

SABANGO v SABA Wide range of classes incl bicycle dynamos, cutlery, firearms, ropes,

gymnastic mats v jewellery & clothing

Apparel Group Pty Ltd v Lidl Stiftung & Co KG. [2011] ATMO 124


•

v superman workout

Entertainment/educational services etc v exercise classes / fitness clinics

Delegate considered services were not the same or of the same description

but did not consider that the marks were deceptively similar in any event.

DC Comics v cheqout pty ltd [2012] ATMO 65


•

v SLIM and

TRIM

(separate marks) Soups incl powdered soups, shakes, meal replacement products etc v milk

& milk products

Parmalat Australia Ltd v ALDI Foods Pty Ltd [2011] ATMO 127


•

KIMBERLEY ATTIC LADDERS v

Ladders, frames, rails, etc

Attic Ladders Pty Ltd v Kimberley Plastics Pty Ltd [2012] ATMO 36


•

v

and other similar marks

Loyalty, rewards and discount schemes and programs etc v Services in

relation to the transportation of passengers by air etc

American Airlines, Inc v AdvantageCard Pty Ltd [2012] ATMO 6

Not goods of the same description: s 44

•

Textile coasters and bar cloths v wine and liquors

Kenzo SA v Kenzo Tsujimoto [2012] ATMO 58

Confusion likely: s 60

V SEEK

SEEK COMMERCIAL

Seek Limited v GMO (WA) Pty Ltd [2012] ATMO 25


tradiesdownunder V

Men’s clothing Employment agency /

recruitment services

Stephen Julian-Fraser v Stephen Roche [2012] ATMO 43


Golden Food Kitchen V

& other similar marks

Golden Crumpet Co A'sia (Extended) Pty Limited v David Innes Pty Ltd

[2012] ATMO 38


HOTEL CIPRIANI v CIPRIANI RESIDENCES

Hotel reservation services v Leasing and rental of apartments

Hotel Cipriani S.P.A v Altunis-Trading Gestao E Servicos LDA & Cipriani

Group Inc. [2011] ATMO 106


JETSTAR v JETSTAR

Coffee, tea, cereal etc v Airline services incl supply of meals

& beverages

Qantas Airways Limited v N.V. Sumatra Tobacco Trading Company

[2012] ATMO 49


INTEL v bellintel

Information technology v Stockbroking, economic research etc

Intel Corporation v Third Party Platform Pty Ltd [2012] ATMO 57


Saks

International v

&

SAKS FIFTH AVENUE

Hair dressing salons etc v Department stores etc

Saks & Company v Ebru Sak [2012] ATMO 32


v

Computer peripheral devices etc v Computer parts & accessories

Belkin International Inc. v Belfan LLC. [2012] ATMO 26


v CIPRIANI RESIDENCES

Twitter, Inc v HOL Holdings Pty Ltd. [2011] ATMO 129

That’s all folks . . .

Don’t forget: amendments to TMA take effect from

15 April 2013

Documents

Trade Marks Update - List G Barristers · PDF fileTrade Marks Update ... Special mention – Paul Dwyer & “Paul’s Warehouse ... Keane CJ, Jagot and Yates JJ, upholding Gordon J: