Bennett J has allowed Mars to proceed to register its “Whiskas purple” colour as a trade mark for pet food, following Nestlé’s withdrawal of its opposition.
Nicholas Weston has a helpful summary; note Mars’ deliberate emphasis of the colour as a trade mark.
Some Whiskas in the “wild“.
Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (with nice colour trade mark representation)
In a further round of the Food Channel / Network war, Greenwood J has accepted that the inclusion of the trade mark on programming broadcast by ABC Asia Pacific is use of the trade mark in Australia.
ABC Asia Pacific is primarily intended to transmit ABC programming into countries in the Asia Pacific region. Depending on the satellite, however, Australia or large parts of mainland Australia fell within the transmission footprint and not on the periphery. As the ABC Asia Pacific transmissions were free-to-air, the transmissions could be received and viewed by members of the Australian public who installed appropriate satellite dishes and there was evidence before his Honour of businesses operating in Australia which sold and installed the necessary equipment.
As a result, his Honour found that the trade mark was used in relation to the television production services in class 41 for which it was registered. However, the trade mark was not used in relation to the class 38 services of television broadcasting – ABC Asia Pacific was the broadcaster.
Food Channel Network Pty Ltd v Television Food Network G.P. [2010] FCA 703
Satellite broadcast and trade mark use Read More »
If there were any doubt about it, the Full Federal Court has confirmed that the person opposing the registration of a trade mark bears the onus of proving a successful ground of opposition on appeal to the Court. (As a side note, I think this is the new Chief Justice’s first IP decision, at least since joining this Court.)
The Food Channel Pty Ltd (Channel) had applied to register TM 967804:
in class 16 for printed matter. During the application process, it assigned the trade mark application to The Food Channel Network Pty Ltd (Network). Both companies were related entities as a Mr Lawrence was the sole director and shareholder of both.
The registration of TM 967804 was opposed by Television Food Network GP (Television), a US entity. Television is the owner of TM 881666 for TELEVISION FOOD NETWORK and TM 881667, both registered in classes 9, 38, 41 and 42 and TM938228 for services in class 41. TM 881667 and 938228 were for devices:
The Registrar rejected Television’s opposition. The trial judge, however, upheld the appeal finding that Network bore the onus of establishing it was the owner of the trade mark, had used it in good faith and that it was confusingly similar to Television’s trade marks.
The onus point
The Full Court (Keane CJ, Stone and Jagot JJ) dealt with this point quite quickly as inconsistent with the the presumption of registrability established by s 33, long standing principle and the legislative scheme.
The Full Court rejected Television’s argument that the difficulties facing an opponent attempting to establish lack of ownership (s 58) or lack of intention to use (s 59) meant that an evidential onus should shift to the applicant. While the Court appeared to accept that an evidential onus might arise under s 59 where the opponent raises a prima facie case of lack of intention, it considered the difficulties that could arise in the context of s 59 did not attend s 58 which was usually directed to showing that someone else, often the opponent, had used the trade mark first.
The not the owner point
The difficulty which Television seized on here was the assignment from Channel to Network and some evidence in chief from Mr Lawrence:
Television’s argument was that Mr Lawrence defined “The Food Channel” as Network in his affidavit and deposed that it was The Food Channel (i.e., Network) which created and used the trade mark.
The trial judge had found that, the onus being on Network and it not being clear from Mr Lawrence’s evidence who created the trade mark, the ground of opposition was successfully made out.
The Full Court noted that Mr Lawrence had drawn his affidavit himself and commented:
61 The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other. This is particularly so where, as here, the conclusion that the words The Food Channel in Mr Lawrence’s affidavit meant Network and only Network depends on a single opening definition in an affidavit drafted by a layperson, in a case where Network was the sole respondent attempting to answer a notified ground of opposition that Network was not the owner of the mark, and where any distinctions Mr Lawrence drew between his companies were few, random and confused. In this case, this evidence does not establish that Network was the prior owner through use. It may establish that Network used the mark at a time before registration, but it doesn’t negate the possibility that Channel was, in fact, also a user (and indeed the first user) of the mark before registration. Further, there is no evidence as to how the mark was used by Network. Use needs to be in relation to the goods or services claimed; on the only evidence before the Court, there was “no set formula” with regard to use. This tends against a conclusion that any mark was used by Mr Lawrence, Network or Channel to distinguish one company’s goods from another. Finally, the requirement of prior user as a trademark is that it is used to distinguish one’s goods from another’s: if Network did use the mark, there does not seem to be evidence of an attempt to use it in such a manner as to distinguish its goods from those of Channel. And of course, it is inherently unlikely that Mr Lawrence, as the directing mind and will of both companies, would have had any such an intention.
62 To treat Mr Lawrence’s statement that Network ‘created’ and ‘used’ the mark as exclusive of permitted use by Channel is counter-intuitive, given her Honour’s observation at [77] that the “evidence …is that Mr Lawrence tended to confuse his own business interests with those of his companies, and appeared to randomly use companies and trade marks depending on the circumstances…”.
This with respect pragmatic approach may be constrasted with the very strict approach taken by a rather different Full Court in Crazy Ron at [109] – [127].
As the Full Court noted, further, to the extent there was any confusion about ownership, it fell to Television to clarify the position since the onus lay on it as the opponent.
(It would appear from the Register that TM 733265 was in fact registered by Channel and subsequently assigned to Network.)
The no intention to use point
The trial judge’s finding that Network had no intention to use the trade mark when it was filed was tied up with the confusion in Mr Lawrence’s evidence about who created the trade mark.
Mr Lawrence did give evidence that “The Food Channel” had provided recipes bearing the trade mark to butchers for distribution by the butchers to their customers. It was not clear whether or not the recipes were sold to the butchers or there was some other quid pro quo. However, the Full Court accepted that this uncontested evidence demonstrated that there had in fact been use of the trade mark in the course of trade.
Trade mark comparison
Finally, the Full Court found that Network’s trade mark was not deceptively similar to Television’s trade marks when viewed as a whole – they neither looked nor sounded similar – and having regard to the differences in the goods and services specified.
Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (Keane CJ, Stone and Jagot JJ)
The onus on appeal from a trade mark opposition Read More »
IPRIA held a public seminar on the Commonwealth Government’s proposals to ban the use of artwork and logos on cigaratte packaging.
The video and Powerpoint packs are now online via here – Prof. Davison advises me that Videos 4 and 5 are the “legal” ones.
Tobacco and trade marks seminars – the video Read More »
E & J Gallo owns TM No 787765, BAREFOOT, for “wines” in class 33. It had acquired ownership of the trade mark by assignment in 2005 from a Mr Houlihan.
Lion Nathan introduced a new beer into Australia under the trade mark BAREFOOT RADLER (with a barefoot device):
The Full Federal Court found that Lion’s beer infringed Gallo’s trade mark as goods of the same description, but ordered the trade mark removed because it had not been used for the 3 year statutory period prescribed by s 92(4) – in this case between 7 May 2004 and 7 May 2007.
Neither Gallo nor Mr Houlihan had ever sold, or specifically authorised the sale of, any wine under the BAREFOOT trade mark in Australia. If that were all, it would have been an end to the matter. However, there was a complication. Wine made by Mr Houlihan’s company, Barefoot Cellars, in California had actually found its way into Australia and been offered for sale.
Barefoot Cellars had sold a shipment of 60 cases of its wine to a distributor in Germany in 2001. Some of the consignment to the German distributor was imported into Australia by a liquor wholesaler, Beach Avenue. In the 3 years relevant to the non-use claim, Beach Avenue imported 144 bottles of the wine; at least 41 of which were actually sold during the period (and a further 18 were given away).
Lion Nathan argued, and the Full Federal Court had accepted, that there had been no use of the trade mark as a trade mark because neither of the trade mark owners had intended to project their goods into the Australian market.
There was use in the course of trade
The High Court rejected this argument.
51 The capacity of a trade mark to distinguish a registered owner’s goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the course of trade, is a use for the purposes of the Trade Marks Act. A registered owner who has registered a trade mark under the provisions of the Trade Marks Act can be taken, in general terms, to have an intention to use that trade mark on goods in Australia. It is a commonplace of contemporary international trade that prior to consumption goods may be in the course of trade across national boundaries.
That is, what is required is that (1) there be some sign which functions as a trade mark – a badge of origin – and (2) the sign be used in the course of trade in Australia.
The sale in England by the English manufacturer to retailers for resale in Estex was sufficient for this, but awareness that the retail markets in Australia was the intended destination was not necessary.
As the High Court’s references to Champagne Heidsieck v Buxton (a case, if not exactly dear to my heart, certainly engraved on it!) show, any other conclusion would be inconsistent with the cases establishing that parallel imports do not infringe trade marks and which have been enshrined in s 123.
In context, therefore, the last sentence of [50], noting that the goods had been sold to the German trader without any limitation on resale should not be determinative.
Was there enough use?
Lion’s first fall back position was to rely on the insubstantiality of the 144 bottles imported compared to the size of the market for wine in Australia. The High Court rejected this attack:
65 A commercial quantity of wine, some 144 bottles, was imported and offered for sale under the registered trade mark by Beach Avenue during the statutory period. Some 41 sales during that time were proven by reference to invoices and tax paid. There was no suggestion in the evidence that the offering for sale and selling either overseas or in Australia was for any purpose other than making profit and establishing goodwill in the registered trade mark. It was not contended that the use was fictitious or colourable. In all the circumstances the use was genuine and sufficient to establish use in good faith for the purposes of Lion Nathan’s application for removal.
That is, the High Court adopted a qualitative rather than quantitative approach. It is also worth noting the careful reservation that it was not called upon to decide whether or not a single use would suffice.
What trade mark was used?
Lion’s next attack argued that use of BAREFOOT with a representation of a bare footprint on the wine bottle label was not use of the trade mark as registered – BAREFOOT.
The High Court did not reject this argument on the grounds that there was use of BAREFOOT alone.
Rather, at [68] it distinguished the Colorado case (a case from which special leave was refused) on the grounds that the word COLORADO had no inherent capacity to distinguish because of its geographical significance and so the mountain peak device used with the word element was “not a mere descriptor but a distinguishing feature”. In this case, however, at [69] the device element was an addition which did not substantially affect the trade mark’s identity: consumers were likely to identify the mark by reference to the word, the device merely illustrated the word and, except in the case of honest concurrent use, the device alone would not be registrable in the face of the word mark.
An evidential issue about authorised use
Lion’s last attack, arguing that Barefoot Cellars was not an authorised user when it applied the trade mark to the wine, also failed. The potential problem for Gallo here was that neither Mr Houlihan nor anyone else involved in the production of the wine gave evidence about what quality control, if any, Mr Houlihan had exercised. There were 2 strands to this attack.
The first strand was to contend that some assertions of quality control recorded in a consultancy agreement were not in fact statements of fact. This failed as a matter of interpretation of the document. In a separate concurring judgment, Heydon J explained that the consultancy agreement constituted a “business record” and the statements were therefore admissible as an exception to the hearsay rule.
The second argument that there was no quality control by Mr Houlihan because he was only a joint principal in Barefoot Cellars and in addition a third person was the winemaker. This was not, however, sufficient to preclude the exercise of quality control by Mr Houlihan.
E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 (19 May 2010)
Update: should have added links to report on Full Federal Court and first instance (here and here).
Some things the High Court didn’t deal with:
The first question, of course, did not arise as a result of the High Court’s principal ruling. The third question was part of the “evaluative findings” which did not raise general questions of public importance. See [72]
High Court allows appeal in Barefoot case Read More »
IPRIA is hosting a seminar on the Commonwealth Government’s announced intention to ban the use of artwork and logos on cigarette packaging.
Speakers:
They threaten to “consider the economic, legal, ethical and marketing implications of this decision”. Unfortunately, there is no indication that Kev10 will be there to perform his patented double pike with backflip. However, it does seem that the Senate Committee inquiring into the bill is not due to report until 26 August 2010. (although submissions should well and truly be in by now).
Where:
Wednesday, 26 May 2010 at 6pm (Lecture Theatre GO8, Melbourne Law School)
The seminar is free and there are CPD points going.
Details and registration here.
Tobacco and trade marks seminar Read More »
IP disputes often involve the (alleged) infringer providing undertakings or being subjected to injunctions to stop infringing the IP in the future. The sanction for non-compliance being (potentially) contempt of court.
The long running Deckers litigation has now reached the point where Tracey J has found a number of the respondents in contempt of court for breaching undertakings and injunctions from litigation in 2003, 2004 and 2007.
His Honour’s reasons provide a useful guide to prove the contempt(s). Unfortunately, it looks like there will need to be another hearing to establish the penalty.
Deckers Outdoor Corporation Pty Ltd v Farley (No 6) [2010] FCA 391
Not complying with an injunction Read More »
The High Court has unanimously allowed Health World’s appeal from the Federal Court’s ruling that it was not an “aggrieved person” and so had no standing to seek rectification of Shin Sun’s HEALTHPLUS trade mark.
Shin Sun had registered HEALTH PLUS for pharmaceutical products including vitamins and dietary supplements in class 5; and Health World was using INNER HEALTH PLUS for the same type of goods and had successfully registered it. Its action for rectification of the Register had failed in the Federal Court on the grounds that it was not an “aggrieved person”.
The High Court ruled that Health World was an aggrieved person as it and Shin Sun were trade rivals, selling the health products in question.
They are in the same trade, and they each trade in the class of goods in respect of which the challenged mark is registered.
French CJ, Gummow, Heydon and Bell JJ noted at [22]
the legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity”[9] and that it be “pure”[10]. It is a “public mischief” if the Register is not pure[11], for there is “public interest in [its] purity”[12]. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied[13].
This objective was balanced by a need to stop the courts being clogged by, and trade mark owners being vexed by, busybodies. At [27], their Honours noted:
While the Act offers these facilities for ensuring that the Register is pure in the sense that no mark is to be registered unless valid, and no registration of a mark is to continue if it is not valid, the purpose of ensuring purity exists alongside another purpose. That is the purpose of preventing the security of the Register from being eroded by applications for rectification or removal by busybodies or “common informers or strangers proceeding wantonly”[15] or persons without any interest in the Register or the functions it serves beyond gratifying an intellectual concern or reflecting “merely sentimental motives”[16]. Applications of that kind, by clogging up and causing delay in the courts, would cause an unnecessary cloud to hang over registrations. The purpose of avoiding this outcome is reflected in the standing requirements in ss 88 and 92. Applications by persons who are not aggrieved are positively inimical to the fulfilment of the statutory purposes through the Register.
The Full Federal Court from which the appeal was brought had erred by adopting the rule laid down in Kraft v Gaines, that the exhaustive test for standing included a requirement that trader could, or might reasonably, wish to use the mark under challenge.
Crennan J delivered a concurring opinion. Her Honour differed from the majority in considering that an aggrieved person must be affected by the wrongly registered trade mark. Her Honour accepted that Health World satisfied that test. However, Crennan J considered at [61] “it is not essential to the resolution of these appeals to decide that it is sufficient for “a person aggrieved” to prove no more than trade rivalry with the registrant of the trade mark sought to be removed.”
As a result of this ruling, it would seem that Shin Sun’s trade mark would be removed from the Register on the trial judge‘s findings that Shin Sun did not intend to use or authorise the use of the trade mark (s 59(a)) and Shin Sun had allowed the trade mark to become deceptive or confusing (s 88(2)(c)). Health World second action for removal for non-use under s 92 would also succeed.
Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13
High Court allows appeal in Health World Read More »
The European Court of Justice has ruled that the sale of ‘trademarked’ terms by Google as keyword triggers of advertising:
From IPKat reports. According to the IPKat, the rulings themselves:
IPKat threatens more detailed consideration in a later post.
Prof. Goldman provides a thoughtful analysis from a US perspective here.
Google’s sale of ‘trademarked’ keywords does not infringe in EU Read More »
Nestlé has successfully appealed Aldi’s opposition to registration of a 4 bar Kit Kat as a trade mark:
Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218
The trade mark is TM No. 822780 for this:
The endorsement reads:
The trade mark consists of the shape of the goods, being four bars attached to one another by a thin base as depicted in the representations attached to the application form.* * Accepted under the provisions of subsection 41(6).*
Now, the appeal was resolved by consent. There is an interesting practice point there Nicholas J, an experienced IP practitioner before going to the Bench, explains the rationale for allowing appeals on this basis.
The larger questions are of course how did Nestlé get it accepted and what can they do with it?
The endorsement indicates that the sign was accepted on the basis of acquired distinctiveness under s 41(6). It would appear from the Opposition decision, there was (as you would expect) enormous sales and advertising and a survey indicating 77% of the public would identify the shape as Kit Kat.
Consistently with the approach taken by the Full Court in BP Green (cf [118] and [121-122]), the Hearing Officer upheld the opposition on the ground that the shape was not used as a trade mark. Decision here (pdf – I couldn’t find it on Austlii).
Of course, we don’t know what evidence, if any, Nestlé filed in support of its appeal, which might have persuaded Aldi to withdraw.
Next, what happens if Aldi or Coles or Woolworths start selling a chocolate with 4 bars like the shape above wrapped in their own packaging? At the Opposition hearing, Nestlé argued that post sale use, such as unwrapping the chocolate after sale, could constitute use as a trade mark citing Kabushiki Kaisha Sony Computer Entertainment v Nuplayer Ltd [2005] EWCH 1522 (Ch D) in support. Given his conclusions on other points, it was sufficient for the Hearing Officer to assume this was the case. How it sits with Re Yanx’ TM might be another matter.
What happens to those people who are selling 1 finger or 2 bar variations on a theme? Shades of Adidas’ 3 stripe wars.
Kit Kat shape trade mark Read More »
