Security over a business name

A restaurant granted a bank, Westpac, security over its assets.  When the business went sour and the bank came to enforce the security, it found the registration of the business name, Melba’s on the Park, had been transferred to someone else and another company incorporated under the name too.  Apparently, the ability to sell the restaurant business with its name would add significant value.

What to do?

Somehow, the bank has persuaded the Supreme Court of Queensland to grant declarations and injunctions transferring the names back to Westpac.

Mark Davison explores the judgment and how it should have worked here.

I guess if you were taking security over something as risky as goodwill, it certainly wouldn’t hurt to try and tie down the business name registrations etc.  In the good old (monochrome) days, people giving licences or lending on security in such situations used to get signed Cessation/Transfer of Business Name forms and shareholders’ resolutions to change the corporate name.  That led to powers of attorney and stamp duty issues.  And, of course, wouldn’t have worked here once the business name was in someone else’s name!

Case is Westpac Banking Corporation v. McMillan & Melbas On The Park Pty Ltd (formerly Credit Systems Australia Pty Ltd) [2008] QSC 2006

Madrid system and ‘foreign’ trade marks in the USA

So, you’re not a USA-based trade mark owner and you’ve got your “trademark” registered in the US through the Madrid system.  That means you don’t have to worry about all those annoying requirements actually to use the trade mark there, doesn’t it?

Well, no.

Saunders & Silverstein  lay out all the pitfalls that you are going to have to hurdle here.

Lid dip to the Kat with the plummy accent.

A different Chrome IP issue

For those of you wondering what Google Chrome is all about, David Pogue does an excellent review and Google, of course, has pretty good explanatory materials including a comic.

Something your brand owners may want to start thinking about is the new monoline address/search bar: you type in a word and Chrome starts suggesting a range of alternatives.  See an example and watch the video here.

Nothing to worry about, perhaps, if you type in coke and get taken here but what happens if the top suggestion takes you here (takes forever to load)?

This brings up the trade mark/IP issues Marty Schwimmer spotted emerging in Japan here.

Oh, that other, EULA issue here, there and everywhere else too.

What are you going to do

Twitter is a kind of IM (instant messaging, for those of you even squarer than me) for web browsing.  It used to be mainly for …; well, anyway, people who can’t hang around waiting for the email to come through are increasingly adopting it.

Some twitters (or is that tweeters?) are adopting the persona of fictional characters.  The creative ones getting right into character.  Marty asks the questions

Read more about Twitter, including a neat little video, here.

p.s.  I’d like to finish off with a “tweet tweet”, but your groans might be spared in case there’s a letter of demand out there somewhere.

Gripe sites and branding

What do you do when someone registers the domain name [yourbrand]sucks.com?  What should you have done before it got registered?

Apparently, more than 20,000 domain names take the form [yourbrand]sucks.com.  Sometimes, the person that registers it is just after your money (and lots of it); sometimes, they have a very serious grievance with your company and they want to air all the dirty details out there in cyberspace.

When they’re just after lots of your money, WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions indicates that a majority of panellists will probably find the name is confusingly similar to your domain name (but by no means all), but your chances on the other 2 requirements are very hard to predict. Compare para. 1.3 to 2.4.  

 

In Australia, it is likely that a genuine gripe site won’t infringe your trade mark for the simple reason that the griper is not using your trade mark as a trade mark.  (I’m not sure if it would fall within s 122(1)(b), but s 120 specifically requires use as a trade mark and the cases derived from Irving’s Yeastvite v Horsenail indicate that use to refer to the trade mark owner’s own product marked with the trade mark is not use as a trade mark).  Of course, the griper might be engaging in defamation or slander of goods or something similar.

Now, Fairwinds Partners, who are Internet Strategy Consultants, have published a report via brandchannel (pdf) on this issue from a marketing perspective.  The report looks at what’s happening including the clever, but nonetheless brave, strategy adopted by Loews to use the name to field and address their customers’ concerns.

Brave because there aren’t that many brand owners who are going to want to see that word “sucks” joined with their prized asset; clever because … well, they are doing what the customer wants in the main: finding out about the problem and dealing with it.

Monopolies and IP round up

IPKat reviews 2 new texts on the “interface” between aspects of IP and anti-trust or competition and an economics “reader”:

(1) Nuno Pires de Carvalho, TRIPS Regime of Antitrust and Undisclosed Information; and

(2) Irina Haracoglou, Competition Law And Patents: a Follow-on Innovation Perspective in the Biopharmaceutical Industry; and

(3) Robert P. Merges (ed), Economics Of Intellectual Property Law.

IPKat’s review here,

and the IP Dragon entices us with news of a new (1 August) anti-monopoly law in China. which, apparently, reserves well-known trade marks and traditional Chinese brands on grounds of national security.

Simulating Madrid

WIPO has established an online simulator for Madrid system trade mark applications.

As it’s name suggests, it steps you through the various stages of making an application to obtain protection abroad.  It includes a fee calculator (presumably of the official fees).

Try it out here.

Lid dip, Marty.

Is it a trade mark?

Sydney 2000?

Athens 2004?

World Cup 2006?

Beijing 2008?

According to OHIM’s Board of Appeal, World Cup 2006 and related labels like Germany 2006 are descriptive and lack distinctive character.  Accordingly, it ordered their registration as trade marks cancelled.  IPKat has more details here.

May be Parliament was on to something when it enacted the Olympic Insignia Protection Act 1987.

Imagine what would happen if someone did something like this to AFL Grand Final or Formula 1 Grand Prix?

Suspending a trade mark opposition

On application by Darrell Lea, the Registrar suspended Darrell Lea’s oppositions to the registration of some purple trade mark applications by Cadbury purportedly pursuant to reg. 5.16.

Finkelstein J has now found that the Registrar does not have power to suspend oppositions indefinitely.

Given my involvement in matters purple, let me just refer you to Nicholas Weston’s consideration.

Darrell Lea Chocolate Shops Pty Ltd v Cadbury Limited [2008] ATMO 6 (15 January 2008)

Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126 (1 August 2008)