APAA Trade Marks Committee. Recognized Group Report 2012 AUSTRALIA. Ken McInnes Andrew Butler David Lee

Transcription

1 APAA Trade Marks Committee Recognized Group Report 2012 AUSTRALIA Ken McInnes Andrew Butler David Lee 1. Trade Marks Practices Update Raising the Bar Act 2011 The Raising the Bar Act 2011 received Royal Assent and was enacted on 15 April The Act addresses six key areas: raising the quality of granted patents free access to patented inventions for regulatory approvals and research reducing delays in resolution of patent and trade mark applications assisting the operations of the IP profession improving mechanisms for trade mark and copyright enforcement simplifying the IP system Raising the Bar Regulations 2011 The draft Regulations have now been released for public comment. In particular, the draft regulations deal with: changes to the customs notice provisions in relation to both copyright and trade mark protected materials changes to the procedure in relation to patent and trade mark oppositions and in particular tightening of the time periods in which certain steps must be taken and a requirement that the trade mark opponent must now filed a statement of grounds and particulars as is already done in patent oppositions. Applicants will need to file notice of intention to defend. transitional provisions The new Regulations are due to come into effect in April 2013 and submissions can be lodged until 21 November Australian Trade Marks Manual of Practice and Procedure Part 21 (non-traditional marks) was updated to clarify the practice in relation to non-traditional marks such as shape, colour and sensory and scent marks.

2 Tobacco Plain Packaging Act 2011 The new laws will come into effect on 1 December 2012 despite both challenges before the High Court of Australia and the WTO. According to newspaper advertisements to help companies prepare for the new regime, the new packaging may look something like. Note that there is still provision for the inclusion of the brand name although it will be in a standard and not very large font. 2. Australian Court decisions Paul s Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51 The marks: "Greg Norman" and the stylised depiction of a shark, shown left. Great White Shark Enterprises LLC (GWS) had licensed Greg Norman Collections, Inc (GNC) which in turn sublicensed an Indian company, BTB Marketing Pvt Ltd (BTB) to use the marks in India. The primary judge found that the garments in question had been manufactured by BTB for supply to companies outside India. The garments were ultimately imported and sold into Australia by Paul s Retail Pty Ltd (Paul's). At first instance the primary judge rejected Paul's argument that it could rely on a defence under s 123 of the Trade Marks Act 1995 (Cth) as BTB had applied the marks to the garments with the consent of GWS through GNC. On appeal: the Full Court upheld the primary judge s judgment. In particular, the Full Court considered that BTB's licence was limited to use of the trade marks in India and that Pakistan, the country to which the goods were destined, is clearly not part of India. The Full Court agreed that Paul's could not rely on s 123. Decision: appeal dismissed with costs. The original territorial restriction imposed on the Indian licensee meant that the application of the mark for sale of products outside the territory was unauthorised. The Champagne Heidsieck principle is enshrined in s 123 and has no application to s 120 Paul s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130 The marks: A number of Lonsdale and lion logo marks. Paul s Retail parallel imported goods that had been made in China under licence but for the purpose of sale of the goods into limited European countries. The Full Court considered that it was not necessary to conclude whether the s 123 defence applied because the manufacture of the goods for sale into Australia was clearly outside the scope of the licence. Their Honours considered that the Trade Marks Act is the best guide to the extent of a registered owner s rights. On this basis ss 120 and 123 provide that an importer who sells goods which bear registered trade marks is liable for infringement if those marks were not applied with the consent of the registered owner.

3 The Full Court did not consider that it was appropriate to construe s 123 by reference to the competing theories of exhaustion of rights and the doctrine of territoriality. The only question was whether the marks were applied under licence. Their Honours confirmed that Champagne Heidsieck principle added nothing to s 123. Parallel importers need to be wary because the courts will look to the terms of the licence agreement between the person who applied the marks and the trade mark owner. Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 The mark: WILD GEESE. Austin, Nichols applied to have Lodestar s registration of WILD GEESE (WG Mark) in classes 32 and 33 removed from the register for non-use. For various reasons of standing only the class 33 action proceeded. The mark was registered in 2000 but Lodestar did not start promoting its WILD GEESE Irish Whiskey until 2003 (and then only outside Australia) and there were no sales made anywhere in Australia until August The Delegate removed wine, fortified wine and wine-based spirits, namely brandy, grappa and cognac from the class 33 registration. The primary judge then exercised his discretion to decline removal of the WG Mark. The Full Court had to consider whether the primary judge s discretion was miscarried and if so, how should it have been exercised? The primary judge relied on the evidence of substantial overseas use of the WG Mark, a limited profile in Australia, Lodestar s interest in maintaining the WG Mark, a not substantial non-use period, submissions made on the obstacles to use, that Lodestar acquired the WG Mark with an intent to use and did not intend to abandon that intention and the distinction between wine and whiskey meant there would be no confusion if the WG Mark remained on the Register. The Full Court s concluded that there was insufficient evidence for the finding of reputation in Australia and neither the source of the supposed confusion or the reason for it were identified. The Full Court considered that Lodestar had not discharged its onus of proving that confusion might arise if the WG Mark was removed from the Register. In the absence of evidence of deceptive similarity between the WG Mark and other non-registered marks, the Full Court considered that it was difficult to see how there could be any room for confusion if the WG mark were removed from the Register. Note, the Full Court did not consider the primary judge had erred in taking into account Lodestar s use and intentions after the end of the statutory period.the appeal was upheld. it is important to establish reputation in Australia such that removal of the trade mark from the register would cause confusion intention after the three year non-use period, while not conclusive, is a factor to be taken into account.

4 Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022 Mark applied for by Millenium Kingsgate s prior mark The applicant is a part of a larger group of companies and the corporate structure was very much in dispute as it went to whether the applicant was a prior user of a similar trade mark to that which was the subject of this dispute. The applicant relied on three different types of use detailed in the judgment, the earliest dating back to 1972 but by another company in the applicant s group of companies. The respondent relied on its operation of the Kingsgate Hotel in Melbourne which it had purchased in 2000 but which had been operated under that name since The Delegate found that the marks were deceptively similar given that hotel is descriptive and despite the visual differences it was more likely that the marks would be referred to by their word elements. Jacobson J considered that the marks were not deceptively similar must be careful of characterising the words as essential features of the marks and the five bars are a prominent feature of the applicant s mark. Also, people will search for hotels before making bookings and so likely to see the marks. In any event, honest concurrent use was also established. The mark in its entirety must be considered not just the words. The way that consumers would make bookings was relevant to how consumers would come to identify the marks. Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 The mark: AUSTALIA POST v DIGITAL AUSTRALIA POST. The issue was whether the latter infringed the former in relation to the provision of digital mail services. Marshall J held that the addition of the prefix DIGITAL and the different order of the words POST and AUSTRALIA in the respondent s trade mark were sufficient to avoid deception or confusion. His Honour also added that the lack of deceptive conduct was even more apparent when one took into account the fact that competent users of computer technology would be able to distinguish between the services offered by the parties. An interesting point was the applicant s argument that significant weight should be accorded to surveys which it had commissioned for the purpose of determining the issue of deceptive similarity. His Honour placed no weight on the survey evidence, on the basis that the class of survey respondents was not restricted to potential users of the proposed digital service, and explained that

5 the determination of deceptive similarity was a matter for the court. The respondent was found not to have infringed the applicant s trade mark although an appeal is pending. A party who wants to rely on survey evidence must ensure that the survey is properly constructed and carried out. The courts are increasingly examining who is the relevant consumer for the purpose of deciding whether they would be deceived or confused. Winnebago Industries, Inc v Knott Investments Pty Ltd (No 2) [2012] FCA 785 The marks: and. The first respondent manufactured and sold RVs in Australia under the Winnebago name. The other 11 respondents were all dealers who distributed the first respondent's vehicles. Simply put, the first respondent has manufactured and sold RVs in Australia since the late 1960s and at some point after 1977 adopted the Winnebago name. The applicant became aware of the first respondent's use of the Winnebago name in 1985 and although considered it an infringement, did little until At that time negotiations took place and a settlement was reached under which the first respondent continued was able to use the marks in Australia but was not entitled to apply for registration of the marks here. Despite this in 1997 the first respondent applied for registration of WINNEBAGO, as depicted above. In 2010 the applicant became interested in exporting its RVs to Australia and again asked the first respondent to cease using the Winnebago name but being unsuccessful commenced proceedings. The question to be asked was whether, 25 years after the applicant first became aware of the first respondent's use of Winnebago, the applicant was entitled to injunctive relief restraining the respondents from using the Winnebago marks. Foster J considered that the applicant had established that a substantial number of potential customers looking to buy or rent RVs in Australia were aware of Winnebago and its RVs as of 1 June 1982 and that as a consequence these consumers would be likely to be deceived into thinking that the first respondent's business was that of the applicant and RVs manufactured in Australia were those of the applicant. Although the delay may have precluded obtaining interim relief it did not prevent the applicant from obtaining permanent injunction. The first respondent was held liable and its registration cancelled. The key date for establishing reputation was 1982 when the first respondent began making RVs under the Winnebago name in Australia. The delay of a trade mark owner in pursuing an infringement action when it first becomes aware of the infringement, is not necessarily fatal to its ability to take action at a later stage. Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 The mark: Q1. The central issue was whether a trade mark can be registered for services where the mark concerned is also the name of the building from which the services are supplied. Spagnuolo successfully

6 opposed, under s 43, Mantra s applications to register Q1. The Trade Marks Office decided that Q1 was not a badge of origin but had a geographical connotation relating to the Q1 Towers in Surfers Paradise, Queensland. On appeal, Reeves J held that Q1 was inherently adapted to distinguish Mantra IP s designated services from the services of other traders (s 41(3)), use of the mark would not cause confusion or deception (s 43) and was not contrary to law (s 42). Reeves J basically considered that Q1 had become distinctive of Mantra s services and upheld the appeal. The name of a building can be registrable if it is used to distinguish the services provided from and in relation to that building. The name of a building is not a geographical name under the Trade Marks Act. Facton Ltd v Toast Sales Group Pty Ltd [2012] FCA 612 The marks: G-star and other marks used on clothing labels. Toast Sales conducted pop-up warehouse sales at which it sold a range of clothing including those branded G-Star. Toast Sales acquired its clothing from three different suppliers, Denim Enterprises which operated G-Star stores in Australia, Bagga Menswear which was a UK store that went into liquidation and Attr@ttivo which was a Greek company. It was accepted that Toast Sales had infringed the marks in relation to the Attr@ttivo goods. The products sold were genuine G- Star products and the following marks were used to market, promote, advertise, offer for sale and sell G-Star branded products:, and G STAR (Infringing Marks). Several of the Infringing Marks were used in s, on Toast Sales website, Facebook pages, a poster and/or on flyers. What was contentious was whether there was a nexus between the applicants registered G-Star trade marks, the alleged Infringing Marks, and their use in relation to retailing services, being services closely related to class 25 goods, for which the trade marks were registered (see 120(2)(b) of the Trade Marks Act 1995 (Cth)). Middleton J held that the respondent s retailing clothing services were closely related to registered clothing goods. However, the use of the Infringing Marks on promotional material was not in relation to retail services that are closely related to the registered goods. The facts of this case were distinguished from Sporte Leisure and the respondent was able to use the s 123 defence as the marks had been applied with the consent of the trade mark owner. Establishing that the registered marks were applied to the goods with the consent of the owner is crucial to establishing the s 123 defence. It is not just use of the marks by the respondent that is important but proof that the use was in relation to the goods for which the mark was registered or closely related services.

7 Australian Health & Nutrition Association Limited trading as Sanitarium Health Food Company v Irrewarra Estate Pty Limited trading as Irrewarra Sourdough [2012] FCA 592 The mark: GRANOLA. The respondent s use: and. Jagot J focused on the totality of the packaging. While accepting that GRANOLA was a made up word, her Honour considered that in the context of the packaging it was inherently suggestive of meaning and that consumers would know that all natural handmade granola referred to the contents. As the word was used in this phrase, all natural handmade was clearly descriptive of the product, granola. Further, even though granola was in larger letters on two versions of the label, Jagot J did not accept it had the prominence that Sanitarium wanted to give it. Her Honour considered that Irrewarra was not using the word granola as a badge of origin but as a description of the contents of the package. Further, her Honour was not prepared to accept what she considered was Sanitarium's basic argument that any use of granola on a package was a trade mark use. It was no surprise that her Honour held that there had been no use as a trade mark and so no infringement. The totality of the packaging and not just the label must be examined. The prominence of the mark will be relevant to determining if the use is an infringement. The way in which the mark is used in context is important. Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281 The marks: "Kwik Kerb" in classes 7 and 37. May, the man behind Zippykerb, was responsible for registering a number of domain names including and which all linked to a single website www. zippykerb.com. This website contained numerous references to Kwik Kerb. Reeves J followed the decision in Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 and held that the use on the website amounted to use as a trade mark in relation to goods or services in respect of which the trademark was registered. It was held that the trade mark infringement was established. This case is confirmation that use of a trade mark on a website can be infringing use but that all the circumstances must be considered. Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271

8 The mark: MALTMARKET BAR & KITCHEN. The Delegate had allowed registration of MALTMARKET BAR & KITCHEN in class 43 in respect of taverns. The opposition was based on ss 41 and 44 of the Trade Marks Act 1995 (Cth). The opponent owned the mark MALT LOUNGE and intended to expand its business and use the mark for a licensed lounge bar business. The unsuccessful opponent appealed. McKerracher J stressed that he had evidence available that had not been before the Delegate. The appeal raised a new s 59 (applicant not intending to use mark) argument which forms the focal point of the judgment. Tricarico s argument was that Dunn Bay used the MaltMarket Trade Mark as logos rather than MALTMARKET BAR & KITCHEN and this substantially affected the identity of the MaltMarket Trade Mark. The Market was effectively obscured and difficult to read in the way in which it was used. His Honour noted that MALTMARKET is the sole non-descriptive element in the mark and that Market comprises half of it. Using the mark in a way which obscures this half changed the identity of the mark. Further, Dunn Bay had only used the mark in plain letters where it was required by law to do so. The actual evidence of the way the MaltMarket Trade Mark was used was not in evidence before the Delegate but based on the evidence before him his Honour considered that the mark should not have been registered. The appeal was allowed and the mark not registered. Failure to use a mark as applied for can substantially affect the identity of the mark so that it is not registrable. Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 Applicants mark: TIVO registered 10 November 1999 for a variety of goods in classes 9, 35, 38 and 41. Respondents mark: registered 18 February 2008 for goods in classes 9 and 38. The main issue was whether the respondents mark should be removed from the register because it was, as at the priority date, deceptively similar to the applicants registered trade mark TIVO and, or alternatively, was likely to deceive or cause confusion by reason of the latter s reputation in Australia. Sections 44(1) and (2) although not visually similar, the marks were considered aurally similar and the differences in the context of a sale, would not preclude the likelihood of confusion. Further, the goods and services covered by the registrations were considered similar. S 60 despite the fact that there had been no TiVo sales in Australia at the priority date the primary judge found that TiVo had established reputation amongst a significant number of potential consumers such that use of Vivo was likely to deceive or cause confusion. Vivo s non-use application against TiVo failed. TiVo conceded it had not used the mark in relation to televisions during the relevant non-use period but argued that the court should exercise its

9 discretion under s 101(3) particularly on the basis that TiVo had used the mark on similar or closely related goods. (DVRs and remote controls). The primary judge agreed. Decision: Vivo mark should be cancelled and removed from the Register. Vivo has appealed. Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 The opposed Fry mark in class 35 for Retailing of goods (by any means) : (Fry Trade Mark). Sports Warehouse had used a variety of marks since 1994 including ( ) going through a number of changes to from 2006 onwards. Section 41 (trade mark not distinguishing applicant s goods/services) the Fry Trade Mark may be highly descriptive but not fully or specifically descriptive of the services in relation to which registration was sought or those in fact provided by Fry Consulting. The stylised tennis ball was eye catching and far from a literal image of a tennis ball. The Fry Trade Mark was, therefore, inherently capable of distinguishing Fry Consulting s services, pursuant to s 41(3). Sports Warehouse was unable to establish the necessary reputation for the purposes of s 60 and in relation to s 62A, the judge noted that mere negligence, incompetence or a lack of prudence to reasonable and experienced standards is not sufficient to establish bad faith. Decision: appeal allowed; mark registered. 3. Australian Trade Marks Office decision Red Bull GmbH v Chia Khim Lee Food Industries Pte Ltd [2012] ATMO 7 (25 January 2012) The mark: successful. in class 32. Red Bull s opposition based on RED HAWK in class 32 was Himalaya Global Holdings Ltd [2012] ATMO 19 (15 February 2012) The mark: SOLIGA FOREST HONEY in class 34. S 41(5) (mark not distinguishing applicants goods) SOLIGA refers to a tribe in India with a reputation for harvesting honey so use of mark would indicate honey came from this tribe; other traders should be allowed to use SOLIGA. The applicant filed substantial evidence and the hearing

10 officer also had the opportunity to review the examiner s research. However, the hearing officer was not disposed to accept the applicant's submissions. He agreed the mark was specific but considered this specificity increased the descriptive nature of the mark; the fact that most Australians would not have heard of SOLIGA did not affect the word s inherent qualities; other traders might want to use this word. Decision: application rejected. Red Bull GmbH v Hip Hop Beverage Corporation [2012] ATMO 17 (10 February 2012) The mark: PIT BULL ENERGY DRINK in class 32 for non-alcoholic beverages including energy drinks. Red Bull was unsuccessful in its opposition based on prior registrations for BULL and RED BULL. The hearing officer did not consider that the marks were deceptively similar because applicant s mark left impression of a dog (pit bull) and opponent s mark that of a male bovine animal. The hearing officer was not convinced consumers would think PIT BULL ENERGY DRINK was another drink in RED BULL family (s 44). Although the opponent had established reputation in RED BULL for the purposes of s 60 it had not established reputation in BULL alone and consumers would not think applicant s drink came from the same family. Decision: opposition failed. Twitter Inc. v Jason Boyce [2012] ATMO 31 (23 March 2012) The mark: in class 35 for advertising services. Twitter Inc had TWITTER registered for a wide range of services in classes of 38, 41, 42 and 45. s 44 (identical except marks) the central question was whether or not the services of the proposed application were of the same description as at least some of the services in the opponent's registration. The hearing officer rejected the applicant's submissions based on the opponent's actual use of its mark and the applicant's proposed use, and the importance that should be placed on the differing classes of service. The hearing officer considered it was apparent the services applied for were indivisible from any of the opponents, especially those in class 38. The marks were also considered to be deceptively similar. The applicant was also unable to prove honest concurrent use. Decision: opposition established with costs. Stephen Julian-Fraser v Stephen Roche [2012] ATMO 43 (27 April 2012) The mark: tradiesdownunder in class 25, men s clothing. It was opposed on the basis of the opponent s registered mark and trade recruitment consultancy services. in class 35 for range of employment S 60 (trade mark similar to one with reputation in Australia) applicant s mark had words in reverse order; hearing officer considered addition of graphics in opponent s mark was minor element and didn t affect the words by which the marks would be identified. Opponent s evidence

11 showed use of mark on trade recruitment services and clothing. Marketing directed to TAFE institutions and sponsorship deals. T-shirts and caps had been sold to customers. Significant reputation in Australia established. Although applicant s goods not covered by opponent s registration, opponent had strong reputation and sold clothing through website. This plus similarity of marks would add to confusion. Decision: opposition established; registration refused. Advance Magazine Publishers Inc v Provogue (India) Pty Limited [2012] ATMO 33 (4 April 2012) The mark: in class 25 clothing. The opponent relied on its prior registration for VOGUE in class 25, however, was unsucessful in establishing any of the ss 44, 59 or 60 grounds argued at the hearing. Kraft Food Australia Pty Ltd v Mars Australia Pty Ltd [2012] ATMO 51 (22 May 2012) The mark: FREE BARS in class 30. Example of use of FREE BARS Opponent s use of Freebie S 41 (trade mark not distinguishing applicant s goods/services) evidence of use of free bar or free bars filed; nothing turned on difference between two phrases. Fact other traders have used the phrase is not the correct test. Test is whether other traders will need (without improper motive) to use the trade mark for the sake only of its ordinary meaning. Trade mark considered under s 41(6). Relevant date is filing date. Note examination of the decision is hampered by a claim for confidentiality over earlier uses of the mark by the applicant and there was no evidence linking the earlier use and revenue figures to the non-confidential information. Evidence that was produced showed use of free bars in the ordinary meaning. Decision: registration refused; costs against applicant. Reed Elsevere Properties, Inc [2012] ATMO 46 (11 May 2012) The mark: TOTALPATENT in class 45 for computer services etc relating to analysis, evaluation and creation of patents; online searching database for patents. S 41 (trade mark not distinguishing applicant s services) submissions hinged on the distinction between use of the mark in respect of the specified services and use on the certain databases; application only related to services. Delegate did not understand the distinction. Fact mark is one

12 word has no effect on its meaning or ability to distinguish. Other traders would want to use total patent in ordinary meaning in relation to their services. Decision: application refused without the need to consider ss 41(5) or (6). Seekers Australia Pty Ltd v Janine Zylstra [2012] ATMO 60 (21 June 2012) The mark: ELEMENTS in class 25. Application to remove the mark for non-use. The evidence showed that the owner had been under a three year restraint of trade imposed on them when they sold part of their business. The agreement allowed use of another trade mark but not ELEMENTS. The hearing officer considered that the opponent had control of the restraint and so the restraint was not an obstacle within s 101(3). However, the opponent showed extensive use before the restraint period and significant preparations for the commencement of use after the restraint ended but only in relation to swimwear. Decision: no use during relevant period but Registrar s discretion exercised in favour of owner in relation to swimwear only and the balance of the specification to be removed; no order as to costs. Chris De Lorenzo v Deva Concepts LLC [2012] ATMO 55 (19 June 2012) DEVA in class 3. The opponent relied on a number of marks including and all in class 3 and DELVA in classes 3 and 5. S 44 (identical etc trade marks) similarity of goods not contended. Despite DEVA having a meaning, the hearing officer considered most people would consider both DEVA and DELVA to be invented words. Whilst there was some similarity between the marks, the L was not lost and changed the length of the word. Marks also had different pronunciation and first syllables dee and dell significantly different. Finally, price point of goods meant consumers would pay attention to what they were buying and so no confusion. The ss 59, 60 and 62A grounds also failed. Decision: opposition failed. Mount Everest Mineral Water Limited [2012] ATMO 65 (26 July 2012)

13 The mark applied for: in class 32 for a range of drinking water products. Cited marks included in class 32 for bottled mineral water, WATER CLOSEST TO HEAVEN in class 32 for mineral water and HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS in class 32 for mineral water. The hearing officer noted that the approach to be taken in the comparison of composite trade marks which share an allegedly descriptive element remains an issue of considerable uncertainty. S 44 (identical etc trade marks) difficulty where both marks share elements which are of low adaptive strength with those that can distinguish. Not correct to say that, with use, any mark might qualify as a trade mark. Emphasis was placed on the fact this was a pre-acceptance assessment and the presumption of registrability applies. The applicant argued that Himalayan together with Mineral Water only indicated the geographical origin and type of goods and were not a badge of origin. The hearing officer agreed. One important factor was that the cited marks had not been accepted either under s 41(5) or 41(6) which would have implied a prior right in the shared element. Decision: application accepted.