Shades of green – 2

Last week’s post looked at the substantive reasons for the rejection of Frucor’s attempt to register a shade of green as a trade mark for energy drinks. There were also a couple of points about grounds of opposition and amendment of applications on appeal worth noting.

image002.jpg

You will remember that Frucor’s application included a green swatch, copied from its New Zealand trade mark application, which was for a different colour than the colour identified by the written description under reg. 4.3(7), Pantone 367c.

What’s a ground of rejection (for opposition purposes)

In addition to the grounds of opposition provided by sections 58 to 62A, as you will know s 57 provides that an application may be opposed on any of the grounds on which the application could have been rejected during examination.

Coca-Cola argued that the inconsistency between the graphic representation of the mark and the written description was itself a ground of rejection.

The basis for this argument was that s 33 required the Registrar to reject an application where the application had not been made in accordance with the Act. It argued the Registrar should have rejected the application because the inconsistency meant that Frucor’s application had not been made in accordance with the Regulations as required by s 27(2)(a).

Yates J rejected this argument at [136]ff. The grounds of rejection contemplated by s 57 were, relevantly, those provided by s 39s 44. (They even appear under a heading “Grounds for rejecting an application”.)

The power to amend

Frucor had not sought to amend its application to substitute a swatch of the correct colour before the Registrar during the examination process. It did apply to amend, however, during the appeal to the Federal Court.

Yates J, citing the approach taken by Heerey J under the Patents Act in Genetics Institute,[1] held that the Court had power to consider the amendment application under s 197 even though there had not been an application to amend before the Registrar. At [195], his Honour explained:[2]

…. I do not see how an appeal to this Court from a decision of the Registrar in opposition to registration proceedings under the Trade Marks Act differs materially from an appeal to this Court from a decision of the Commissioner in opposition to grant proceedings under the Patents Act. Whilst I acknowledge that, in the present case, an application under s 63 of the Trade Marks Act was not before the Registrar, the registrability of the mark the subject of the application was in contest. In the proceedings below, the Registrar had the power to permit the application to be amended subject to the constraints placed upon the exercise of that power by the Act. Given the nature of the “appeal” to this Court, the Court’s power to quell the controversy as to the registrability of the mark—the subject matter of the appeal—cannot be more limited than the Registrar’s power. Further, it cannot matter that the Registrar was not asked to exercise the power of amendment, just as it cannot matter that an opponent might seek to raise additional or new grounds of opposition, or that the parties might seek to adduce different evidence to the evidence that was before the Registrar or raise new or different arguments. The opposition proceeds afresh before the Court on the subject matter that was before the Registrar and is adjudicated upon accordingly.

This practical approach is, with respect, to be welcomed in the interests of efficiency and, if followed, would obviate the need to introduce into the Trade Marks Act a counterpart to s 105(1A) of the Patents Act which, in turn, arose because Courts applying NEB had ruled a Court hearing an appeal from an opposition before the Commissioner had no power to deal with an amendment application.

Even though the power existed, Yates J at [206] denied Frucor’s application to amend. The substitution of “a markedly different green-coloured swatch” for the existing swatch would substantially affect the identity of the trade mark and so was prohibited by s 65(2).

Frucor also made a very late application to the Court to amend the application on the basis of s 65A.

The very late stage of the application and the lack of any utility (as the application would fail the distinctiveness requirement in any event) were fatal.

In contrast to his Honour’s practical approach to allowing consideration of an amendment under s 65 through s 197, however, Yates J considered allowing a party to bring an application under s 65A for the first time in the Court would subvert the statutory process for the consideration of such amendments by the Registrar prescribed by s 65A. Section 65A contemplated publication of the amendment application in the Official Journal and opposition proceedings before the Registrar.

In further contrast to Yates J’s views about s 65A, it may be noted that Courts dealing with amendment applications under s 105(1A) have directed the amendment applicant to publish the application in the Official Journal so that the Commissioner and any potential opponents may intervene.[3] The difference is of course that the Patents Act through s105(1A) expressly tells the Court to deal with the request to amend because of the inefficiencies and delays which had resulted.

As previously noted, it does not appear that Frucor has appealed.

Frucor Beverages Limited v The Coca-Cola Company [2018] FCA 993


  1. Which Yates J noted was apparently endorsed by the Full Court in New England Biolabs at [50].  ?
  2. See also at [200] – [201] and [204].  ?
  3. A recent example is Electronic Tax-Free Shopping Ltd v Fexco Merchant Services (No 3) [2017] FCA 569 at [2] – [3].  ?

Shades of green

Frucor’s attempt to register the colour green as the predominant colour applied to its “V” energy drinks has failed. The colour being applied for was not properly defined and, consequently, had not been used as a trade mark. Yet again, consumer survey results did not help.

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Frucor’s application included a green swatch, copied from its New Zealand trade mark application and, in accordance with reg. 4.3(7) a written description:

The mark consists of the colour green (Pantone 376c), as shown in the representation attached to the application, applied as the predominant colour to the goods, their packaging or labels.

The fundamental problem was that the green colour of the swatch was not Pantone 376c.

What’s the trade mark

Frucor argued that the written description should be given priority over the coloured swatch as a matter of construction of the trade mark application.

Its argument was that any trader looking at the Register would realise the colour swatch was inherently unreliable due to the potential for corruption through scanning, printing etc. Consequently, anyone looking at the Register would recognise that Pantone 376c was the subject colour.

Yates J considered this analysis was informed by Frucor’s subjective intention. The matter needed to be determined objectively. Reg. 4.3 required the application to set out a representation of the mark and, in that context, r. 4.3(7) required a description of the mark “as represented”. It was the representation which was primary. At [122], his Honour concluded:

…. A person inspecting the Register is entitled to act on the assumption that the trade mark applicant’s own depiction of colour in the representation accompanying the application is accurate.

Once the person inspecting the Register appreciated there was an inconsistency between the graphic representation and the description, there was no way to resolve the disconformity.

“V” green had not acquired distinctiveness

As the application was for a single colour mark, this meant that Frucor could not possibly demonstrate its trade mark had acquired distinctiveness under s 41(6)(a), the old (or pre-Raising the Bar version).[1] At [145], his Honour explained:

As the Full Court explained in Woolworths/BP at [79], it is important to appreciate that it is the use of the mark applied for, as a trade mark, that determines what can be registered. In that connection, the Full Court emphasised that the mark that is the subject of the application for registration must conform to the mark that was, for the purposes of s 41(6), used before the filing date. Because, in the present case, the mark is defined ambiguously—its features are uncertain and cannot be determined objectively—it is not possible for Frucor to establish the factual condition of s 41(6)(a) by reference to its own particular use of “V” Green. It follows that, for that reason alone, registration should be refused in the present case.

Yates J would have rejected the application even if one assumed there was no ambiguity and the colour claimed was Pantone 376c.

Yates J accepted that Frucor’s use of “V” green was substantial, consistent and conspicuous. At [163], his Honour had “no doubt that … those familiar with Frucor’s “V” energy drinks would have associated “V” Green as the colour of Frucor’s core energy drink product.” (emphasis supplied)

Yates J held, however, that this extensive use and recognition was not use as a trade mark.[2] First, at [164] the “consistent presence” and “dominating display” of the “V” logo was what consumers would recognise as performing the function of the badge of origin for the goods.

Accepting that there could be more than one trade mark for a product, the second consideration was the role colour played in the soft drink market including energy drinks, soft drinks, sports drinks, fruit juices and bottled water.

Packaging and labels in this field are often brightly coloured. Soft drink producers used colour to denote a range of things: sometimes product flavour, more generally some “varietal characteristic”. Frucor itself had different varieties of “V” which were presented in different liveries (scroll down): red for berry flavoured, silver for sugarfree, black and also a yellow in addition to “V” green which was reserved for the “hero” of the range. So at [166]:

…. Although Frucor’s use of “V” Green was pervasive and no doubt fundamental to its whole marketing strategy, it was, nonetheless, reminiscent of its core product. In this way, Frucor’s use of “V” Green was essentially descriptive, not distinctive in the trade mark sense. It denoted the core product in the “V” energy drink range. I am not persuaded that, somehow, consumers would understand that colour in relation to the core product was being used differently to colour in relation to other varieties within the “V” energy drink range, or any differently from how colour was and is used descriptively across the range of non-alcoholic beverages sold through trade channels such as supermarkets and convenience stores.

So at [167], even though more than one trade mark could be used on any given product, the “V” green colour did not function as a trade mark.

What the market survey didn’t prove

Frucor’s evidence from a market research consultant based on two surveys did not help. His evidence showed, for example, that some 77% of the survey respondents identified Pantone 376c with a brand of energy drink and and 85% of those identified the drink as Frucor’s “V” energy drink. As a result, the expert concluded that Pantone 376c was part of Frucor’s “brand identity”, having properties that went well beyond decorative or functional attributes so that it distinguished Frucor’s products from other traders’.

The main problem was that evidence the public associated, or even identified, a particular colour with a “brand” by itself is not enough to establish that the colour is functioning as a trade mark. At [171], his Honour explained:

… evidence of an association (or, I would add, identification) of a sign, including a colour, with a particular product does not mean, without more, that the sign is functioning or has functioned as a trade mark in relation to that product. One needs to have an understanding of how the sign was used, in the proper context and setting, before that conclusion can be drawn. Moreover, the conclusion is not purely a factual one.

The last sentence in that extract points out that whether something is used as a trade mark is a legal conclusion.

If you are going to advance someone to give evidence that a colour has been used as a trade mark – as Frucor’s market survey expert purported to do, you will also need to demonstrate that the witness properly understands the legal concept. More practically, if you are trying to convert your colour into a trade mark, you need to educate your public that it is being used as your trade mark. At it’s most rudimentary level (and bearing in mind the range of other issues), can you tell your customers to “look for” you product by reference to its colour?[3]

Market survey blues

Approaching the matter in this way enabled Yates J to avoid having to deal with the numerous criticisms about the survey methodology raised by Coca-Cola. A couple of points, however, do emerge.

At [168], Yates J was sceptical that the sample used in the surveys was representative. Frucor’s expert had not bailed up survey respondents randomly in the street or at the shopping centre. Rather, as is quite common in marketing, they were drawn from a panel of people who had signed up to participate in surveys.

That criticism is all the more compelling given the second point. Yates J was not at all comfortable accepting Coca-Cola’s criticisms of Frucor’s survey methodology in the absence of support from Coca-Cola’s own expert evidence.

It does not appear that Frucor has appealed.

Frucor Beverages Limited v The Coca-Cola Company [2018] FCA 993


  1. Presumably, the same reasoning would apply under s41(3) in the “new” version.  ?
  2. At [148], Yates J recalled that this required “an understanding, from an objective viewpoint, of the purpose and nature of the use, considered in the context of the relevant trade” citing Woolworths/BP at [77].  ?
  3. See for example the evidence in Philmac about its khaki and then terracotta plastic pipe fittings leading to the conclusion at [40]. For more recent US practice see here.  ?

Trident Seafoods 2

A previous post examined Gleeson J’s conclusion that Trident Foods had not used its TRIDENT trade marks for a continuous period of three years because it had not actually controlled the use by its parent, Manassen. As noted there, however, Gleeson J exercised her discretion under s 101(3) not to order removal.

You will recall that Trident Foods has had TRIDENT registered:

(1) for fish and fish products in class 29 since 1973, TM No. 266,625; and

(2) since 1983, for meat, fish, poultry and various extracts, preservatives and pickles, TM No. 400,953,

and Trident Seafoods is trying to get those trade marks removed for non-use because they are blocking its attempt to register its own trade marks for “Trident Seafoods”. Gleeson J found that Trident Foods had not used its trade marks either itself or through an authorised user in the relevant 3 years between 2011 and 2014, but exercised her discretion against removal.

Discretion against removal

At [179], a number of matters played into her Honour’s decision not to order removal.

One factor was that Trident Foods had not abandoned its trade mark but, when the removal action had been filed, had organised Manassen to make some limited sales of fish products and (eventually) had entered into a formal (and presumably effective) licence agreement with Manassen.

Another factor was the risk of confusion if Trident Seafoods started marketing its products in Australia by reference to a trade mark which included “Trident”. While there had been limited use by Manassen in relation to fish and fish related products, there had nonetheless been some limited use both before and after the non-use period and that use had been with the knowledge and acquiescence of Trident Foods. Moreover, there was longstanding use in respect of a wide range of food products which changed over time.

Interestingly, Gleeson J would not have exercised the discretion if Manassen’s use had been in respect of products other than fish and fish products only. Such use could be taken into account in favour of the exercise of the discretion because there had been some use in respect of fish and fish products and, apparently more importantly at [178], because Trident Foods and Manassen still intended that Manassen continue to use the trade mark as an authorised user.

The fact that the limited sales of fish and fish products after the non-use period were specifically motivated in response to the bringing of the non-use application was not ‘colourable’. At [175], Gleeson J noted that the sales were not unprofitable or otherwise contrived, but appeared to reflect a genuine estimate of the extent to which the products could be profitably sold in Australia.

Other matters – what goods were specified

In the course of her Honour’s reasons, Gleeson J was required to give careful consideration to the meaning of “fish and fish products” in the specification of goods in the respective trade marks. This required consideration of the signification of the terms in the editions of the Nice Classification in force at the priority date of the trade marks as well as the normal meaning of the terms.

Trident Seafoods argued that the terms were limited to creatures with scales, gills and fins. However, Gleeson J accepted at [55] – [56] the terms were wide enough to cover crustaceans such as crabs and prawns and molluscs such as oysters as well as foods prepared from those products.

Trident Foods argued further that the use of TRIDENT for products which include fish as an ingredient would constitute use in respect of fish and fish products relying on, for example, sales of prawn flavoured tom yum soup. Gleeson J rejected this argument in its broadest form and, instead, considered a qualitative assessment on a product by product basis was required:

  1. … the application of a trade mark to a particular food product is a use of the trade mark in relation to those goods only, and generally not to the ingredients from which the goods are made.

Noting that a a trade mark in respect of flour would not cover bread or vice versa, her Honour explained at [66]:[1]

whether a product is a “fish product” will depend on the ingredients of the product or, perhaps, whether the product is identified by its name as a fish product. Generally speaking, the greater the fish content in a product, the more likely it will be to answer the description “fish product”. In my view, a fish sauce product or flavouring made from fish could be a fish product … particularly where the main ingredient is fish or seafood. ….

Noting also that there may be debate about whether a sauce of flavouring of animal origin fell within class 29 or class 30, Gleeson J considered that TRIDENT brand Tom Yum soup, labelled “Tom Yum Goong Flavour Thai Noodle Soup” with a marking “contains Crustacea and fish”, was not a fish product. The contents listed noodles, a flavour sachet, an oil sachet and a chilli sachet and the oil sachet was described as containing, relevantly, fish sauce and dried shrimp.

Honest concurrent user

The final round of issues related to Trident Foods’ fallback application to register TRIDENT for “its” products. After Trident Seafoods brought its non-use application against Trident Foods’ registrations, Trident Foods filed a further application in 2014 to register TRIDENT for its products including fish and fish products. Trident Foods’ application was blocked of course by Trident Seafoods’ earlier, pending applications (which you will remember were in turn blocked by Trident Foods’ registrations that Trident Seafoods was trying to remove for non-use).

The first point is that Gleeson J ruled at [202] that Trident Foods could not rely on “honest concurrent use” to overcome the citation of Trident Seafoods’ applications as Trident Seafoods had not used its trade mark in Australia. The plain, literal words of s 44(3)(a) required “honest concurrent use of the 2 trade marks (emphasis supplied). As there had been no use in Australia of its trade mark by Trident Seafoods, s 44(3)(a) did not apply.

Seems like yet another triumph of the “plain English” drafting of the 1995 Act.

(not) closely related goods

Next, at [207] – [211], Gleeson J ruled that Trident Foods could not take advantage of the prior continuous user provisions in s 44(3)(a).

The long period of non-use from 2007 to 2014 meant that there was no use at all in respect of “the goods” or “similar goods”. However, Trident Foods argued it could rely on use in respect of closely related goods on the basis of the reference in s 44(4)(a)(ii) to continuous use for “the similar services or closely related goods”. Gleeson J held this avenue was unavailable to Trident Foods because s 44(4)(a)(ii) applied only to trade mark applications for services. Where the application was blocked because of its specification of goods, only s 44(4)(a)(i) applied and so the use had to be in respect of the specified goods or similar goods. At [207]:

In this case, s 44(1) applies because the relevant application is an application for the registration of a trade mark in respect of goods. Section 44(2), concerning registration of a trade mark in respect of services, has no application. “[T]he similar goods or closely related services” referred to in s 44(4)(a)(i) are the “similar goods or closely related services” in respect of which registration of a trade mark is sought, referred to in s 44(1)(a)(ii). Section 44(4)(a)(ii) has no relevant operation, because it refers to the “similar services or closely related goods” in s 44(2)(a).

In any event, the use was by Manassen and, as discussed in the previous post, that use was not authorised use and so could not be relied on.

The discretion for “other circumstances” under s 44(3)(b)

Finally, Trident Foods argued at [213] that, even if “honest concurrent use” was not available,

(1) the existence of its earlier registrations for TRIDENT (which were not going to be removed);

(2) the fact that Trident Seafoods blocking applications were pending applications only and were blocked by Trident Foods’ own registrations; and

(3) essentially the discretionary considerations which led her Honour not to order removal of the trade mark registrations for non-use,

were “other circumstances” on which her Honour could exercise the discretion under s 44(3)(b).

At [216], Gleeson J accepted that the inchoate nature of Trident Seafoods’ applications and their inability to proceed in the face of Trident Foods’ earlier registrations was a relevant “other circumstance” enlivening s 44(3)(b).

At [217], however, it was not appropriate to exercise the discretion to allow registration because there was no use, or intention to use, the trade mark at the priority date of the application by Trident Foods or an authorised user:

in the absence of a licence agreement, Trident Foods was not using the “TRIDENT” trade mark as at the priority date and had not authorised any such use. Rather, the mark was being used by Manassen, albeit with the acquiescence of Trident Foods. The use or intended use of the trade mark, or the authorisation or intended authorisation of such use is a precondition to the right to apply for registration by s 27 of the Act. In my view, it would not be appropriate to exercise the discretion under s 44(3)(b) whether [sic] that precondition had not been satisfied.

Moreover, s 59 would apply as a ground of opposition to defeat Trident Foods’ application. You will remember that Trident Foods filed this application in 2014, but its licence agreement with Manassen was put in place only in 2017. When Trident Foods applied to register the trade mark, therefore, it did not have an intention to use the trade mark either itself or through an authorised user.

Trident Seafoods has appealed: NSD1951/2018.

Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490


  1. See also [68].  ?

Trade mark licensing problems

Trident Seafoods has failed to get Trident Foods’ registrations for TRIDENT removed for non-use, but only because Gleeson J exercised her Honour’s discretion against removal.

Trident Foods has had TRIDENT registered for fish and fish products in class 29 since 1973, TM No. 266,625 and, since 1983, for meat, fish, poultry and various extracts, preservatives and pickles, TM No. 400,953.

Trident Seafoods was founded in the USA in 1973. It is apparently the largest seafood distributor in North America. It uses and has registrations all round the world – except for Australia and New Zealand – the trade marks “Trident Seafoods” and a stylised logo incorporating those words. It has been marketing its products in Australia since 2007 under the trade mark “Bountiful”, but its attempt to register “Trident Seafoods” has been blocked by Trident Foods’ prior registrations. It brought an action under s 92(4)(b) to remove those blocking registrations on the grounds of non-use. The non-use period was 7 January 2011 to 7 January 2014.

There is a good chance you have, or have had, some TRIDENT condiments on your shelf, but here’s the thing. Since at least 2000, Trident Foods did not itself manufacture and sell TRIDENT branded products. The products were manufactured and sold by Manassen Foods Australia. Trident Foods claimed Manassen’s use was use as an authorised user.[1] Gleeson J, however, rejected this claim but, as noted above, decided it was appropriate to exercise the discretion under s 101(3) not to order removal.

Manassen was not an authorised user

There was no written licence agreement between Trident Foods and Manassen until 3 November 2017.[2]

In addition to that licensing arrangement, Trident Foods relied on the corporate relationship with Manassen, the involvement in their respective businesses of two common directors and Manassen’s compliance with the Bright Food Group’s quality assurance manual.

Trident Foods is a wholly owned subsidiary of Manassen (and both are members of the same corporate group, the ultimate holding company of which is Bright “Cayman Islands”). Nonetheless, Trident Foods relied on the essentially pragmatic approach applied by the Registrar:[3]

There is nothing unusual in a large company such as Henry Schein, Inc and/or its predecessors (that is “the Company” as defined earlier) incorporating a wholly owned subsidiary in order to hold its worldwide trade mark (or, for that matter, patent or other IP right) portfolio. It is very common practice” because, inter alia, it efficiently streamlines processes for the prosecution and renewal of properties in the portfolio and it avoids the need to record name changes, mergers or assignments around the world should the parent company restructure or change names.

Gleeson J rejected this. Based on the Henschke v Rosemount and the Lodestar v Campari cases, her Honour held at [84] that “control” for the purposes of authorised use required “actual control” “as a matter of substance”.

The corporate relationship between Trident Foods and Manassen did not provide that. At [100(1)]: Gleeson J explained:

The corporate relationship between Trident Foods and Manassen does not place Trident Foods in a relationship of control over Manassen; rather, the converse is the case. The commonality of directors does not, without more, permit Trident Foods to exercise control over Manassen.

Trident Foods led evidence from a Ms Swanson, one of the two directors:

We have always maintained control over Manassen from the point of view of [Trident Foods’] as we have fiduciary obligations to act in the interest of [Trident Foods]. One of the things that has been considered, at least by me, since appointment as a director of Trident, is the quality and standard of the goods being sold under [Trident Foods’] trade mark registrations. As a director of Manassen, I appreciate the high standard of the goods that are sold by this company. As such, I have never had any cause for concern regarding the damage that could occur to the TRIDENT brand owned by [Trident Foods]. If there ever was a suggestion that poor quality goods were to be sold under [Trident Foods’] TRIDENT brand, I would be empowered and authorised to prevent such an occurrence.

Ms Swanson also gave evidence that Manassen had to comply with the Bright Food Group’s vendor quality management system (the VQM Manual) which was in place to maintain quality measures over all of the Group’s brands. In addition, she participated each month in meetings of Manassen’s “Innovation Council” which decided what products Manassen would sell, including “Trident” products, and were concerned with brand valuation and impairment to ensure that the brand was performing well and to avoid devaluation.

Gleeson J considered this was inadequate to establish actual control. Trident Seafoods argued that the directors would be in breach of their fiduciary duties to Manassen if they sought to exercise quality control over its operations on behalf of Trident Foods. Thankfully, Gleeson J did not accept this in terms. Rather, it seems Ms Swanson’s evidence was insufficient because it was at the level of assertion, without demonstrating examples of control being exercised by Trident Foods. At [100] points (2) – (6), her Honour explained:

(2) Ms Swanson’s evidence is in the nature of assertion. It does not include any particular illustration of conduct by Trident Foods amounting to actual control of the use of the “TRIDENT” trade mark.

(3) The fact that Ms Swanson considered it unnecessary to give directions, whether by reason of the existence of the VQM Manual or otherwise, is not relevant to the question of whether Manassen had obligations to Trident Foods in relation to the use of the “TRIDENT” trade mark.

(4) Any control that Ms Swanson might personally exercise by virtue of her membership of the Innovations Council (which was asserted but not demonstrated) does not prove control by Trident Foods.

(5) The identification of Trident Foods as trade mark owner on products supplied by Manassen does not prove use of the trade mark under the control of Trident Foods.

(6) Assuming that the VQM Manual is owned by Trident Foods jointly with other corporate entities in the Bright Group, Trident Seafoods did not demonstrate that the VQM Manual conferred any relevant control on Trident Foods over Manassen.

Finally, Gleeson J was not prepared to find there had in fact been an unwritten licence agreement in place as claimed in the recitals to the 2017 document. The claim was inconsistent with the evidence of how things had actually operated.

It is not possible to tell from the judgment what the contents of the VQM Manual were. One must wonder, however, whether much would really be gained by requiring the directors of Trident Foods to have met and formally adopted the relevant parts of the VQM Manual (assuming there were any) as the quality standards that Manassen needed to comply with and, further, to meet formally as directors of Trident Foods and approve changes to any applicable quality standards or even to meet at regular intervals to consider whether Manassen was complying with quality standards they had prescribed. Unless a subsidiary can never exercise control of its parent or a related body corporate that was not a subsidiary, nonetheless, it would seem that level of formalism is required.

Her Honour’s approach may be compared to that of Nicholas J in Dunlop v Goodyear at [88] and [121]. Of course, in that case the trade mark was owned by the parent, not the subsidiary; there seem to have been numerous written agreements in place and some evidence of head office (i.e., the parent) issuing instructions about the business and the use of the trade marks in the business.

As already indicated, Gleeson J went on to exercise the discretion not to remove Trident Foods’ registrations. In what is already an overly long post, that and some other points of interest will have to await consideration another day.

Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490


  1. As you know, under s 7(3), authorised use of a trade mark by a person is taken to be use of the trade mark by the registered owner. And, under s 8 a person is an authorised user of a trade mark if that person uses the trade mark under the control of the trade mark owner. Section 8(3) and (4) provide that “control” may be “quality control” or “financial control”, although s 8(5) does provide that s 8(3) and (4) do not limit the meaning of “under the control of”.  ?
  2. The recitals stated that there had been an unwritten licence agreement between them since 2000 and this document reflected the parties’ wish to reduce the terms of their licence to writing. Apparently, in reliance on Film Investment Corporation of New Zealand Ltd (Receiver Appointed) v Golden Editions Pty Ltd [1994] FCA 11; (1994) 28 IPR 1 at 15; Black & Decker Inc at [147] and [148]; Allam at [430] and [431].  ?
  3. HS TM, LLC v Schein Orthopadie-Service KG [2016] ATMO 63 at [23]; heard before Lodestar, but decided afterwards.  ?

INTA is coming Down Under

For the first time in 10 years, INTA is holding a 2 day conference in Sydney on 11 – 12 October 2018.

Topics that will be covered include:

  • Balancing IP rights and regulatory restrictions
  • Bringing your business online: the view from China
  • The important role IP Offices play in supporting economic growth
  • Advertising and Data Privacy: Be Prepared
  • Enforcement in the New WHOIS Reality
  • Ad words and metatags
  • Corporate social responsibility (CSR)
  • 3D printing: a positive disruption
  • Ambush marketing
  • Anticounterfeiting

A more detailed breakdown of the program is here.

Overview and registration, here.

WTO upholds Australia’s tobacco plain packaging laws

The Dispute Resolution Panel has rejected the complaints by Honduras, the Dominican Republic, Cuba and Indonesia against Australia’s tobacco plain packaging laws.

Summary (just outlines the provisions contested and rejected). The complainants had:

  1. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 2.2 of the TBT Agreement;
  2. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 2.1 of the TRIPS Agreement in conjunction with Article 6quinquies of the Paris Convention (1967);
  3. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 15.4 of the TRIPS Agreement;
  4. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 16.1 of the TRIPS Agreement;
  5. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 20 of the TRIPS Agreement;
  6. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 2.1 of the TRIPS Agreement in conjunction with Article 10bis of the Paris Convention (1967);
  7. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 22.2(b) of the TRIPS Agreement; and
  8. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 24.3 of the TRIPS Agreement.

Full text via here.

TRIPS Agreement

On to the Appellate Body?

PC Implementation 1 Bill To Be Passed

The Senate’s Economics committee has unanimously recommended that the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 be passed.

The Committee received submissions only on the proposed reform of the parallel import provision for trade marks – clause 122A – and issues relating to plant breeder’s rights.

The Committee considered no changes were required. In relation to the parallel imports question and the concerns that the defence of “reasonable inquiries” will lead to a pirate’s charter, the Committee said:

The committee notes that key parts of the bill originate from recommendations made by independent reviews, and that the provisions of the bill have been subject to extensive consultation. In particular, the committee commends IP Australia for its thoughtful response to the public consultation on the exposure draft of the bill which ultimately led to provisions of the bill being altered in important aspects.

and went on to find the test in the legislation appropriate.

Perhaps most alarmingly, the Committee started its analysis at paragraph 1.6 by endorsing the key points advanced by the Productivity Commission:

• Australia’s IP arrangements fall short in many ways and improvement is
needed across the spectrum of IP rights.

• IP arrangements need to ensure that creators and inventors are rewarded for
their efforts.

• Australia’s patent system grants exclusivity too readily, allowing a
proliferation of low-quality patents, frustrating follow-on innovators and
stymieing competition.

• Copyright is broader in scope and longer in duration than needed—innovative
firms, universities and schools, and consumers bear the cost.

• Timely and cost effective access to copyright content is the best way to reduce
infringement.

• Commercial transactions involving IP rights should be subject to competition
law.

• While Australia’s enforcement system works relatively well, reform is needed
to improve access, especially for small and medium sized enterprises.

• The absence of an overarching objective, policy framework and reform
champion has contributed to Australia losing its way on IP policy.

• International commitments substantially constrain Australia’s IP policy
flexibility.

• Reform efforts have more often than not succumbed to misinformation and
scare campaigns. Steely resolve will be needed to pursue better balanced IP
arrangements.

As the Committee acknowledged at 1.7, even the Government’s response did not go that far!

Senate Economics Legislation Committee Intellectual Property Laws Amendment
(Productivity Commission Response Part 1 and Other Measures) Bill 2018 [Provisions]
June 2018

IP Laws Amendment ( Productivity Commission Response Pt 1 etc) Bill 2018

On May 10, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 was referred to the Senate’s Economics Legislation Committee.

You may recall that, amongst other things, the Bill has another go at parallel imports and trade marks (which also entails repealing s 198A of the Copyright Act 1968), reduces the period before registered trade marks can be attacked for non-use, permits non-PBR-protected varieties to be declared as essentially derived varieties and a host of other reforms (Sch. 2 has 21 Parts)

The Senate committee is required to report on the bill by 22 June 2018.

If you are an agricultural organisation, medical research industry, an IP peak body (who is not going to INTA) or somehow at a loose end, you need to get your skates on as submissions must be made by 1 June 2018.

Bohemia Crystal shattered

Like MICHIGAN for farm equipment and OXFORD for books, Burley J has ordered that Bohemia Crystal’s trade marks, BOHEMIA and BOHEMIA CRYSTAL be revoked because they are not distinctive of “glassware”.

Bohemia Crystal (BCP) had been formed in 1975 to distribute in Australia Skloexport’s products. Skloexport was the State-owned entity responsible for the export of all crystal and glassware products made in Czechoslovakia. In 1999, Skloexport went into liquidation and BCP took an assignment of its Australian trade marks. The main trade mark BCP used in this period, which had been registered since 1962 was the stylised BOHEMIA Glass mark, TM No. 319701:

Versions of this mark were used with or without the words “Made in Czech Republic” or substituting the word “Glass” for “Crystal”.

On 5 October 2001, BCP applied for and successfully registered BOHEMIA CRYSTAL for glassware and on 2 May 2003 BCP applied for and successfully registered BOHEMIA for glassware.

Host is an importer and supplier of catering goods and equipment in Australia. The business was started in 1999. One range within its 2,500 product lines is its range of glassware sourced from another Czech supplier, Forincorp, marketed under BANQUET BY BOHEMIA [1] or:

Host started importing this line in 2015. BCP made the fateful decision to start proceedings for infringement of its registered trade marks and contravention of the Australian Consumer Law for false and misleading conduct.

Burley J held that BCP’s trade marks lacked any capacity to distinguish and had not been used in such a way as to have acquired secondary meaning for the purposes of s 41(6).[2] Burley J also dismissed BCP’s allegations of misleading or deceptive conduct.

It is not going to be possible in a blog post to do justice to Burley J’s 376 paragraphs. Instead five points particularly caught my eye.

First, Burley J (who was a very experienced intellectual property barrister before his appointment) pointed out that the High Court in Cantarella referenced both ordinary consumers and traders as the criterion for whether or not a sign was inherently adapted to distinguish.

BCP argued that the test focused on what ordinary consumers would think the sign meant. It had found an expert who opined that ordinary members of the public would think “bohemia” was a reference to persons with an artistic or unconventional lifestyle.

After analysing Cantarella from [86] on, his Honour concluded at [93]:[3]

in a case such as the present, it is necessary to consider the ordinary signification of the words “Bohemia” and “Bohemia Crystal” in the context of the “target audience”, being traders and consumers of the relevant goods, to determine whether at the relevant dates other traders might legitimately desire to use these words or something similar in connection with their goods, for the ordinary signification which they possess. …. (emphasis supplied)

Here, despite the evidence of BCP’s principle witness, the evidence was largely one way. It was beyond dispute that for many centuries the geographic region known as “Bohemia” which is now in the Czech Republic had a strong reputation for producing high quality crystal and glassware. There was evidence that between at least four and ten different manufacturers used the term “Bohemia” at an important annual glassware trade show to signify the geographic origins of their products. There was also evidence from a number of dealers that the term signified to the public glassware originating from the Bohemia region. BCP’s own registered user agreements for the use of Skloexport’s trade marks had also required it to promote its products as from the geographic region, Bohemia.

Burley J concluded that other traders who had glassware manufactured in the region formerly known as Bohemia legitimately and honestly wanted to use that word to describe the geographic origins of their products. The fact that Bohemia was no longer a separate country (and had not been since the World War I) and not even the contemporary name of the region was not significant.[4]

Second, Burley J found that the evidence of use of the BOHEMIA and BOHEMIA CRYSTAL did not establish that those terms had been used by BCP as trade marks or in such a way as to have acquired secondary meaning. There were three aspects to this conclusion.

Following BP v Woolworths, promotion and use is not enough. It had to be shown that the signs as registered had been used in some way to identify the signs as being trade marks.

Next, for the most part the relevant evidence showed that what BCP had been using as a trade mark was Skloexport’s composite mark, not the terms as registered. This was not use of either trade mark as registered. Moreover it was the combination of the elements in the signs as a whole which comprised the distinctiveness. These signs should not be dissected into their component parts:

228 I have some difficulty with the proposition that the words “Bohemia” or “Bohemia Crystal” should in this context be regarded as having separate trade mark signification beyond the combination in which they appear in the composite marks described above. In my view, it is the combination of elements that is distinctive. The trade mark should be viewed as a whole and not dissected into parts. Although this is likely to be a matter of fact for each case, it is notable that several cases have cautioned against the proposition that separate elements should be so distilled; see Diamond T Motor Car Company [1921] 2 Ch 583 at 588, Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565 at [61], [63].

229 To my eye, the whole of the 701 mark is to be regarded as creating a complicated image that taken collectively represents a sign, or badge of origin. I do not think that the elements within it may be dissected or that they would be dissected by an ordinary consumer of goods within the relevant classes. In any event, I consider that the words “Bohemia Crystal” and “Made in Czech Republic” within the 701 mark tend to reinforce the descriptive, geographical signification of those words. ….

The third factor is the way that evidence was advanced did not help BCP’s case. A lot of the evidence was vague, or general, rather than specific to what needed to be proved here: use of the signs as trade marks before the filing date. In this respect, his Honour’s discussion will repay careful study as it is not uncommon to see evidence prepared for the Office suffering from similar problems.

Third, BCP did not demonstrate any sufficient reason why its trade marks should not be removed from the Register. Burley J accepted that, Host having established the marks were invalidly registered, BCP bore the onus of satisfying the Court that there was sufficient reason not to order cancellation.

Here, the evidence did not establish that BCP had acquired distinctiveness in its signs. Importantly, allowing BCP to keep its registrations would give it an unfair advantage. At [248], his Honour explained:

…. The presence of the existing ground of revocation via the operation of subsection 88(2)(a) and s 41 indicates an intention on the part of the legislature to ensure that historical registrations should not remain on the Register where they should not have been granted in the first place. In the present case, to permit such a course would advantage the unmeritorious registrant who has incorrectly had the benefit of the monopoly since the relevant dates. BCP is able to apply to register the Bohemia marks now, should it choose to do so.

Of course, if it were to do so, it would run the risk of other traders wishing to use the terms opposing (if the Registrar got suckered into accepting the applications in the first place).

Fourth, if his Honour had not found BCPs trade marks invalidly registered, Host would have infringed. Its attempt to rely on s 122(1)(b) would have failed. This part of the case essentially turned on Host’s use being BANQUET by Bohemia (emphasis supplied) rather than BANQUET from Bohemia.

Burley J accepted that s 122 could be invoked to protect trade mark use, not just descriptive use. However, Host’s form of use showed that Host was trying to assert origin in some particular trade source rather than some geographical origin. At [301]:

…. Ms Flint and Mr Sullivan adopted this language, notwithstanding the obvious difficulty with the perception of “by” and with no knowledge of either BCP or the Bohemia marks. However, I find that they did not do so for the purpose of using “Bohemia” to designate the geographical origin of the goods, but to designate the trade origin of the goods lying in a particular entity (which was ultimately Forincorp). Accordingly, the use does not fall within the defence ….

Fifth, BCP’s allegations of misleading or deceptive conduct also failed. A number of factors contributed to this including the particular trade marks BCP had actually used and the good old-fashioned Hornsby Building Information Centre proposition.[5] In contrast to the trade mark case, in addition, it was highly significant that Host’s market and BCP’s market were quite different. BCP’s market was member of the general public looking for premium quality products. Host’s customers, however, were cafes, restaurants, pubs, clubs, community groups and the like who were cost conscious but attended to their purchases with considerable care. So, for example, at [370]:

the typical reasonable consumer is most likely to perceive the October 2015 catalogue use to represent that the manufacturer or producer of the glassware is an entity known as “Banquet by Bohemia” or “Bohemia”, there is no more than a remote prospect that reasonable customers are likely to consider that the goods offered in the catalogue are offered with the sponsorship or approval of BCP or are offered by Host with the approval of BCP or that the Banquet products emanate from BCP. First, I do not consider that the typical Host customer who encounters this publication would be likely to be aware of BCP. Secondly, I consider that any Host customers who are aware of BCP would understand it to be a retailer of a range of glassware products sold under a range of different brands. Thirdly, to the extent that such customers perceive that BCP has a trade connection with products that it sells, those customers are likely to do so by reference to the common use of the 701 mark or the modified 701 mark. Without the presence of that mark, in my view they are unlikely to consider that the word “Bohemia” as it appears in the impugned uses connotes a connection or association with BCP. Needless to say, no such mark appears in the October 2015 catalogue. Fourthly, such customers would also be influenced by the geographical nature of the term and the material differences between the Host and BCP products such as price, quantity and quality. ….

Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235


  1. It also used BANQUET CRYSTAL BY BOHEMIA, CZECH CRYSTAL BY BOHEMIA and expressions like BANQUET FLUTE.  ?
  2. Given the filing dates of BCP’s trade marks, the original form of s 41 applied.  ?
  3. See also [153] – [155].  ?
  4. At [161], Burley J pointed out that PERSIA in the Persian Fetta case and Peking and Ceylon still retained their signification as place names.  ?
  5. If you are going to use a descriptive expression, you have to accept a certain degree of confusion is inevitable.  ?

Enforcing foreign judgments – consultations

The Commonwealth government is participating in negotiations for a new Convention on the recognition and enforcement of foreign judgments. Now it is seeking public input on a range of outstanding issues.

One of the general issues on which input is sought is the extent to which and the nature of problems experienced in trying to enforce a judgment in a foreign country.

Intellectual property issues are high on the list of matters being debated. Chapter 5 of the consultation paper is directed to intellectual property rights’ issues.

The issues include whether or not intellectual property rights should even be included in the judgments covered by the Convention. So draft article 2(m) proposes to exclude judgments about intellectual property rights from the Convention altogether; alternatively, articles 5 and 6 proceed on the basis that intellectual property rights are included. Which approach should it be?

If included, the basic idea is that a judgment on subsistence, ownership or infringement of an intellectual property right made by a Court in the country which granted the right could be enforceable under the proposed Convention to the extent that the judgment dealt with the subsistence, ownership and infringement of the right in that country.

It is proposed to treat judgments about the subsistence, ownership and infringement of registered rights granted by the country where the judgment is made as falling exclusively under the Convention. Judgments about unregistered rights, such as copyright and unregistered designs, would not be exclusive.

According to the consultation paper, one consequence of this arrangement would be that judgments involving “multi-state IP infringements” of registered rights will be enforceable under the Convention only to the extent that the judgment relates to infringements in the country/jurisdiction issuing the judgment.

No doubt for sound philosophical rationalising, trade secrets do not count as intellectual property rights under the draft Convention. Practically speaking from a business’ perspective, however, one might wonder why confidential information should be treated differently to unregistered “rights”.

Another area of issues raised in the consultation paper is the extent to which awards of damages, especially additional or exemplary or otherwise punitive damages, should be capable of enforcement under the Convention.

As the next (and possibly final) meeting of the commission preparing the draft for a Treaty conference is on 24 – 29 May 2018, the deadline for submissions is COB 27 April 2018.

Hague Conference Judgments Project: Recognition and enforcement of foreign judgments