“The Dumb Little Man” has an overview of 6 ways to monitor what is being said about your client, or your client’s brands, in the virtual world here.
IP Australia has issued an options paper reviewing the criminal penalties and whether or not additional damages should be available for trade mark infringement in Australia.
Some of the considerations for reforming the criminal penalties under the Trade Marks Act relate to the wide ranging reform of the criminal penalties structure in the Copyright Act effected by the amendments in 2006 and a perception that Australia’s penalties may be out of line with other countries’ approaches. (No mention of the behind the scenes ACTA negotiations is made). A key issue emerging from the paper, however, is that IP Australia is seeking to quantify the extent of counterfeiting activity in Australia – the paper suggests that the empirical evidence available to IP Australia does not seem to support the anecdotal claims.
Unlike copyright, patents and registered designs, additional damages are not available for infringement of registered trade marks. The options paper questions whether this should still be the case.
Apart from the anomalous treatment of trade marks compared to the other main statutory rights, I would have thought the US Free Trade Agreement (art. 17.11.7) leaves room for debate only about whether there are additional damages or statutory damages. May be there’s a transitional provision or side agreement that someone can point me to which makes this optional?
Written comments are required by 27 February 2009.
Typosquatting can occur when someone registers a misspelling of your domain name in the hope that your customers will mistype the domain name in their web browser and land on that someone’s website. (Apparently, a significant portion of people who do so then click on a link on the typosquatted website, thus generating pay per click advertising revenues for the site ‘squatter’.)
Apart from the potential diversion of custom, FairWinds Partners also makes the point that typosquatting can harm the reputation of the brand. As an example they speculate about the impact on Disney’s customers if they landed on a typosquatted page promoting pornography.
Recognising that it is not feasible to register every possible variation of your domain name to defend against such practices, FairWinds Partners have published a attempt to analyse typosquatting scientifically.
The study looked at 3,000 top level domains that had more than 2,000,000 hits per month. From this universe, they found that most typosquatting appears to fall into 1 of 10 categories. They also concluded that the typosquatters were targetting domain names fairly scientifically.
Apart from typosquatting, FairWinds Partners notes that consideration should be given to registering the domain name in other tlds – e.g. consider .biz and .net, not just .com; also consider country specific domains. This, however, is already problematic – there are already 21 gTLDS, not to mention of the country specific ccTLDS such as .com.au and .co.uk etc. And its going to get much worse with ICANN, in the interests of competition and diversity no less, planning to allow a potentially unlimited number of tlds.
Download the paper here (pdf).
Not only did E & J Gallo fail in its infringement action against Lion Nathan’s Barefoot Radler mark for beer, but Lion Nathan successfully applied to get E & J Gallo’s trade mark removed for non-use. Various grounds were advanced to support the use of the trade mark. The surprising thing about this second part of the case, however, is that wine labelled with E & J Gallo’s trade mark was actually sold in Australia during the relevant non-use period.
(For the background and the first part of the case see here.)
The non-use period ran from 2004 to 2007. E & J Gallo had acquired the trade mark by assignment in January 2005. Neither E & Gallo’s predecessor, nor E & J Gallo had exported wine under the trade mark to Australia in the relevant period.
What happened was that E & J Gallo’s predecessor had exported some 60 cases of wine to Germany in 2001. Somehow, some of this wine made its way to Australia and was offered for sale, and sold, by someone known as Beach Avenue Wholesalers.
Flick J rejected the contention that the fact of the offering for sale and sale by Beach Avenue Wholesalers was sufficient to constitute use of the trade mark. His Honour also rejected the contention that Beach Avenue Wholesalers, someone who neither E & J Gallo nor its predecessor ever knew of or heard about was an authorised user of the trade mark.
His Honour distinguished Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 on the grounds that the trade mark owner there had consciously projected its goods into the course of trade in Australia.
One interesting thing about this approach is it is directly at odds with the cases, and reasoning, on why parallel imports don’t infringe trade marks: the fact that the trade mark owner had put the goods on the market anywhere was and is sufficient.
An appeal from Flick J’s decision is scheduled for hearing in November, NSD1085/2008
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)  QSC 2006
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?
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.
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.
This brings up the trade mark/IP issues Marty Schwimmer spotted emerging in Japan here.
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.
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.
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.