The Australian Bar Association “gets” Australian Barristers Chambers

The Australian Bar Association[1] (the ABA) has obtained declarations that Australian Barristers Chambers Pty Ltd[2] and associates (the Chambers entities) have infringed the ABA’s registered trade marks:

  • No 1587902 – AUSTRALIAN BAR ASSOCIATION; and
  • No 1558252 – for the ABA “logo”:

by using the names:

  • Australian Barrister Chambers;
  • AustBar Chambers; and
  • Australian Barrister,

in close proximity to an image of the scales of justice. For example:

The ABA has also obtained declarations that the Chambers entities have engaged in misleading or deceptive conduct contrary to s 18 etc. of the Australian Consumer Law by using those names and also by using:

  • the URL ?www.austbar.com.au?;
  • the name AustBar Chambers;
  • the name AustBar ADR;
  • the tweet identifier ?Australian Barrister@AustBar?;
  • and all of the above in in proximity to, the scales of justice.

The NSW Bar Association[3] has also obtained declarations that its trade marks for BARADR have been infringed, and s 18 of the ACL contravened, by the Chambers entities by the use of BARADR and the domain names ?www.baradr.com.au? and ?www.austbaradr.com.au?.

As James McDougall points out, the decision is 360 paragraphs long and so will no doubt require further, careful consideration. A few points caught my eye skimming through:

One point which should be noted (as clients often raise it) is Greenwood J’s orthodox rejection of the claim that Chambers’ name(s) were defensible because the business name registration or domain name registration system permitted them. Greenwood J pointed out at [175]:

The circumstance that a domain name registration might or might not meet the eligibility criteria for registration is no answer to the question of whether use of such a domain name is either confusing or misleading or constitutes infringement of a registered trade mark, in Australia. Prior to the introduction of the dispute resolution protocols governing domain name registrations, it had become something of an art form for registrants to register, as domain names, the names of traders who had developed a reputation for a name or mark within a jurisdiction and often internationally. Processes were adopted as a result of that practice to try and address that conduct. Whatever the perceived “validity” might be of the domain name registration ?www.austbar.com.au? within the confines of that system and its protocols, austbar and AustBar are terms, names or indicia associated, particularly electronically, with the ABA.

The signpost point

Greenwood J was prepared to find that AUSTRALASIAN BARRISTERS CHAMBERS by itself, or even in the logo form:

by itself for a virtual chambers of barristers would not have infringed the ABA’s rights. However, traffic to the website was directed by the “signpost” <www.austbar.com.au> and that conduct was infringing:

[181] As to the use of the name Australasian Barrister Chambers, I do not regard the use of that name as being either substantially identical with or deceptively similar to either TM 902 or TM 252. However, traffic is directed to a website for and on behalf of that company (and later Austbar PL) by use of the domain name ?www.austbar.com.au?. Use of that domain name involves use of a mark or sign in the course of that company’s trade in services for which TM 902 is registered. I regard the use of austbar in this context as a use of a mark or sign deceptively similar to TM 902. Once a person engages with austbar as the conduit to the website operated by Australasian Barrister Chambers, the sense of confusion or wonderment about whether the person is engaging with the ABA or a provider connected with the ABA remains.

[182] However, by itself, the name Australasian Barrister Chambers might be thought to suggest a set of chambers occupied by barristers “virtually” (and in this case only a virtual presence is relevant), engaged or seeking to be engaged, in work in the Australian and Asian markets for legal services, by seeking direct electronic access to those who engage barristers in that work. In this case, of course, the key electronic point of connection is a domain name using austbar. Barristers might seek greater direct access to the legal profession in this way but it is also important to remember that the website addresses clients and the community directly through the website. Mr Minus, entities controlled by him (or over which he has influence) and other barristers would be entitled, plainly enough, to engage in an undertaking of establishing an online virtual presence for barristers associated together in some way, shape or form. The difficulty is the use of sign, mark or signpost which directs traffic to the site under or by reference to the dominant domain name descriptor austbar associated with the Australian Bar Association. The use of austbar as a mark signposting the electronic route to the site operator is the vice and the infringing conduct.

It will be very interesting to see what form of injunction is fashioned in response to these findings.

Unincorporated associations and ownership trade marks

Greenwood J rejected various attacks on the ABA’s title to its registered trade marks. When the applications for the ABA’s registered trade marks were filed in 2013, “it” was still an unincorporated association, so the 12 members of “its” executive council were the applicants, each described “as trustee for the Australian Bar Association”. Subsequently, three of the original applicants retired from the executive council and assigned their interests to the remaining members. Greenwood J held:

[222] I accept that as a matter of construction of the TM Act, a joint owner may assign his or her “share” or “interest” in the trade mark to another with or without an assignment by any other joint owner. Mr Colbran QC, Mr Traves SC and Mr Walker were joint owners (with the other nine AB Council members) and joint applicants as trustees for the ABA for each trade mark. When they assigned their interest in each trade mark, the incoming assignees took, between them, that aliquot share of the three assignors impressed with the same trust upon which that interest had been held by them. The interest of each of the remaining nine applicant owners as trustees remained entirely as it was.

[223] There is no defect in title in the sequence of transfers as discussed.

Chambers’ disclaimer did not help

Chambers’ website seems to have various forms of disclaimer appearing at different times – his Honour considered the evidence was not fully clear about all the forms or timings.

Greenwood J considered that none of the forms sufficiently proved were sufficient. His Honour explained at [237] that to be effective the disclaimer had to satisfy the following test:

the critical matter in relation to the efficacy of the disclaimer is whether the respondents have discharged the onus of demonstrating that the disclaimer is likely to be seen and understood by all those reasonable fair minded members of the various cohorts engaging with the website (leaving aside extreme and fanciful reactions and isolated exceptions), who would otherwise be misled. In order to be effective, the disclaimer must be such as to leave the fair minded reasonable member of the class in no doubt about the source or origin of the services provided under and by reference to the website; in no doubt about whether the ABA is associated or affiliated with the site operator or the services offered by the operator; and in no doubt about whether the ABA is in some way, shape or form standing behind the website operated by the respondents.

Chambers’ disclaimer did not achieve that. By the time the reader had reached the website, there had already been infringement and misleading or deceptive conduct:

[240]: First, by the time a person engages with the website, they have already been taken there by a sign, the use of which involves an infringement of TM 902 and taken there by reason of conduct in contravention of s 18(1), s 29(1)(g) and s 29(1)(h) of the ACL. The user is already drawn to the site. He or she is already attracted and engaged by the conduct. At that point, the disclaimer needs to operate in such a causative way that it cures an existing problem (if able to do so at all which is likely to be difficult and rare), by making it absolutely clear to the reader who is looking at the site electronically for particular information that this site is not a website operated by the ABA and nor are the services provided by the website the services of the ABA or services associated with or approved by the ABA. One imagines that the disclaimer would need to capture the eyes of the viewer with significant text with appropriate emphasis. Small text located two thirds of the way down the page is never likely to be sufficient and in the facts of this case, it is not sufficient. It is a classic example of the message being “in the small print”.

[241] Second, in the facts of this case, the truth of the matter is that the unlawful conduct was complete once the trade mark infringement had occurred and once the misleading conduct had taken the person to the site. At that point, the disclaimer had to be powerful enough to undo the harm.

Thirdly, some of the public who would land on the website would be consumers looking to access the views of a national body like the ABA, but misdirected there by Chambers’ cues.

One might also question the relevance of any disclaimer to infringement under s 120(1) as opposed to s 120(2) or s 120(3).[4]

Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649


  1. Now a company limited by guarantee but, from 1963 until 20 May 2015, an unincorporated association of, you guessed it, Australian barristers.  ?
  2. now in liquidation, and various associated entities including its principals Mr Minus and Ms Minasian.  ?
  3. which was incorporated as long ago as 1936.  ?
  4. See e.g. Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 at [99]  ?

Another get-up case gets up

The get-up for Homart’s CHÉRI ovine bio-placenta product has been held to misrepresent an association with Careline’s CHANTELLE product.

Chantelle

 

Chéri

 

 

 

 

 

 

 

Now, you might be thinking that CHÉRI marks out Homart’s product from CHANTELLE rather plainly. But the dreaded Red Bull and Peter Bodum cases reared their heads again.

Sales of Careline’s CHANTELLE product had exploded after it adopted its current get-up: from between $25,000 to $60,000 per year to over $2 million in between June 2014 and early 2016 when Homart introduced its competing product.

Homart’s get-up was nothing like the other products in its CHÉRI range. Its get-up was much closer than any other competing product to Careline’s. The boxes of the products were often displayed in stores stacked, with the lid of the top box open so that customers could see the contents.

 

 

 

 

 

 

Accordingly, the branding on Homart’s product was often not visible, at least initially. CHÉRI itself was not thought to be a particularly distinctive mark, especially as both CHANTELLE and CHÉRI began with the same “shhh” pronunciation. Burley J could not accept the explanation for the adoption of the get-up advanced by Homart’s designer.

After a very careful consideration of the evidence, his Honour summarised:

194 The unique combination of features making up the get-up of the CHANTELLE bio-placenta product are eye-catching. They extend to the packaging in open or closed configuration and provide strong visual cues by which a consumer would note and remember the product. From this combination, quite separately to the name, the consumer is informed of the origin, quality and type of goods being purchased. Homart has taken all of those cues.

195 The suggestion conveyed by the get-up is not, in my view, dispelled sufficiently by the use of the CHÉRI Australia brand name. The name CHÉRI Australia is a relatively weak mark for distinguishing otherwise identical products because:

(a) such reputation as Homart has in the mark CHÉRI is weak and has been significantly dissipated by reason of Homart’s choice to use it in packaging distinctly different to the products in the balance of the CHÉRI range (see section 9 above);

(b) the phonetic and visual similarities between the first letters of both the CHÉRI and CHANTELLE marks diminish the effect of the use of different words (see [85] above). In this context both Chantelle and Chéri are French sounding names. Both commence with “Ch…”. To persons not familiar with French, they are likely to be weak means of distinguishing otherwise identical products (unlike “Andronicus” and “Moccona” in Stuart Alexander). They are likely to be perceived as words that convey little or no meaning (I make this observation without particular regard to the level of English literacy of the target market and assuming it to be roughly on par within native English speakers); and

(c) the addition of the reference to “Australia” has a similar local geographical connotation to “Sydney” as used in the CHANTELLE bio-placenta product.

….

 

198 Further, the trade circumstances to which I have referred in section 5 above demonstrate that often the display of the bio-placenta products in stores may not clearly show the trade mark, for instance, when the products are stacked one on top of the other. In those circumstances consumers are likely to use the visual cues provided by the get-up of the packaging to indicate the product which they seek rather than the names.

199 In my view, it is likely that a not insubstantial number of persons within the relevant class, who are aware of the CHANTELLE bio-placenta product, would be diverted from a search for that product by the get-up of the Homart product. They may note that something seems different about the brand name, but be convinced by the other similarities in the get-up that her or his recollection as to the brand name was mistaken. A consumer familiar with the CHANTELLE bio-placenta product may well recall its get-up, but have no or an imperfect recollection of its name and acquire the CHÉRI bio-placenta product believing it to be the CHANTELLE bio-placenta product. This would be especially likely in circumstances where the store does not stock both brands. The rapier of suggestion caused by the similarity in get-up will in those circumstances result in a sale for Homart.

200 Further, the findings that I have expressed in section 8 above (Development of the CHÉRI bio-placenta product) as to Homart’s intention, lead to the application of Australian Woollen Mills. That authority was applied by the Full Court in RedBull at [117] (Weinberg and Dowsett JJ, Branson J agreeing) who said:

Without wishing to labour the point unduly, we again point out that where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse…”. Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference. Obviously, this reasoning will only apply where there are similarities in get-up which suggest borrowing.

201 In the present case, I am satisfied that this was the intention of Homart. As noted in Red Bull at first instance (Conti J) at [64], the difference between the brand names is not necessarily decisive of an absence of the requisite intention. Nor, as I have noted above by reference to the Full Court decision in Peter Bodum, is the presence of a brand name determinative of an absence of misleading conduct. In the present case, in any action under s 18 of the ACL, one must look at the totality of conduct of the alleged deceiver.

202 I have found that Homart intentionally adopted a get-up for its product for the purpose of appropriating part of the trade or reputation of Careline. The choice of the CHÉRI Australia brand name was not, in the particular circumstances of this case, sufficient.

In the context of the findings at [198] above, his Honour had earlier noted at [29] – [30] that the cause of action could be made out even if the customer’s mistaken impression was dispelled by the time they had reached, or at, the sales counter. Burley J did discount Careline’s argument that the largely Chinese speaking customer base would not appreciate the different wording in Roman characters.

Does this mean Parkdale v Puxu is dead?

Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd [2017] FCA 403

WIPO Overview 3.0

WIPO has released the third edition of its WIPO Overview of WIPO Panel Decisions Views on Selected UDRP Questions.

Since the second edition, there have apparently been about 17,000 cases processed by WIPO under the UDRP.

If you have a potential domain name dispute problem, this is an excellent place to start and even more help if you are preparing, or defending, a Complaint under the UDRP.

Print outs of third party websites ruled inadmissible

Mortimer J has ruled that print outs of third party websites are inadmissible as hearsay and, if not, excluded under s 135 of the Evidence Act as unduly prejudicial.

Shape Shopfitters is suing Shape Australia for infringement of several registered trade marks which, it says, include SHAPE as the essential feature and the usual passing off-type actions.[1] Both are in the commercial construction business. Shape Australia used to be called ISIS Group Australia, but changed its name in October 2015, as her Honour said “for reasons that are immediately obvious.”

Shape Shopfitters is contending that the use of “Shape” in Shape Australia’s name is likely to lead people to think that Shape Shopfitters is the “shopfitting” arm of Shape Australia, which it is not.

As part of its defence Shape Australia sought to lead evidence of ASIC and Australian Business Register records of other companies and businesses with the word SHAPE in their name. Shape Australia also sought to introduce print outs of the websites of various businesses resulting from Google searches such as “shape building”.[2] Some, but not all, of the print outs were from the Wayback Machine. The print outs purported to be of businesses called Shape Consulting, Shape Builders Pty Ltd, Shape Joinery & Design Pty Ltd, Shape Fitouts Pty Ltd and Shape Finance (Aust) Pty Ltd. You will immediately appreciate that Shape Australia was hoping to show that “shape” itself was not distinctive or to rely on the well-known proposition from the Hornsby Building Information case.[3]

Mortimer J noted that no objection was taken to the ASIC or Australian Business Register print out – presumably, because they were official records.[4]

However, the print outs of the websites of the businesses themselves were hearsay. They were being advanced to show that there were other businesses out there claiming to have and use the names appearing in the print outs. At [24], her Honour ruled:[5]

the evidence sought to be adduced by the respondent is clearly hearsay within the meaning of s 59 of the Evidence Act. The statements made on various internet sites of other corporations or business entities (including the archived material to which Mr Henry deposes in [24] of his affidavit)[6] constitute a previous representation made by the person or persons who constructed the website, wrote the text and inserted the graphics. The purpose of adducing evidence of those statements of text and graphics is to prove the existence of a fact it can reasonably be supposed was intended by the drafter of the text and the person who constructed the graphics. The fact is that there were business entities trading on the dates specified (between August and October 2016) in the industries and markets set out on the pages exhibited by Mr Henry, in the locations those webpages identified using the names those webpages identified. It is the actual existence of those business entities, the names they were using, the industries and markets in which they were trading, the services they were offering and the locations in which they were offering those services which the respondent in my opinion seeks to use as part of its case to prove that there was no confusion in the marketplace generated by its use of the word “shape” in SHAPE Australia.

Even if the print outs were not hearsay, Mortimer J would have excluded them under s 135 if the Evidence Act on the basis that their probative value was substantially outweighed by the danger of prejudice to Shape Shopfitting.

the evidence … constitutes no more than a snapshot of what was available through a series of internet searches on a particular date, without any context being available to be tested about the nature of the businesses these searches have turned up. The probative value of such searches is limited on any view. The applicant’s case is a very specific one about what participants in the commercial construction industry may or may not be led to believe concerning the relationship between the applicant and the respondent, and whether the applicant might be seen as no more than a “specialist shop fitting arm” of the respondent. To have evidence in the nature of single date extracts of internet searches showing businesses using the word “shape”, without calling evidence from witnesses who operate or control those businesses, and allowing the applicant to test the similarities or differences between those businesses and its own, between the customer base(s) of those business and its own, and in turn between those businesses and the respondents, is in my opinion to create a danger of unfair prejudice to the applicant. Snapshots of internet searches on particular dates, all of which are between just under and just over a year after the respondent adopted the name “SHAPE Australia” contribute little by way of proof as to what participants in the commercial construction industry were likely to believe about the commercial relationship between the applicant and the respondent since 26 October 2015, but it is not the kind of evidence the applicant can test as it should be able to.

What Shape Australia should have done was get affidavits, or subpoena, from (1) witnesses from the companies it wished to prove existed and (2) consumers who might be searching for the relevant services.

Now, depending on which side of the case you find yourself, you will be cheering or in tears. But, at the very least one might wonder if that correct approach is really conducting litigation “as quickly, inexpensively and efficiently as possible”? It will be very interesting to see how her Honour deals with Shape Australia’s substantive arguments whether it’s name is too similar to Shape Shopfittings’? Meanwhile, the Registrar can treat the Wayback Machine as valid evidence.

Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474


  1. In which I include the usual misleading or deceptive conduct actions under the Australian Consumer Law too.  ?
  2. It is not clear whether the search was just of the two words or the two words in quotation marks.  ?
  3. At [25].  ?
  4. At [13].  ?
  5. Noting that at least 2 prior decisions had ruled internet archive materials inadmissible: Athens v Randwick City Council [2005] NSWCA 317 and E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 93.  ?
  6. I.e., the Wayback Machine print outs.  ?

Annual IP Report 2017

IP Australia has published its Australian Intellectual Property Report 2017.

Some key points:

  • there were 28,394 applications for standard patents filed in 2016, a one per cent decline from 2015. At the other end, 23,734 patents were granted last year, an increase of 3 per cent from 2015;
  • there were 2,322 innovation patent applications in 2016 up by 27% from 2015;
  • there were 71,344 trade mark applications in 2016, down by 3 per cent from 2015 – Madrid filings decreased by 14 per cent;
  • there were 7,202 design applications filed in 2016, a 3 per cent increase over 2015;
  • in 2016, IP Australia registered 6,644 designs and certified 978;
  • the number of PBR applications increased by a whopping 8 per cent: from 359 to 387. IP Australia registered 111 PBRs.

IP Australia has completed a draft of its cost-benefit analysis for Australia joining the Hague Agreement and “will look to share the draft and seek feedback on the research later in 2017”.

There is also a long(-sh) chapter challenging the view that there is an Australian crisis in university-business collaboration. The chapter includes convoluted node diagrams showing the types of collaboration by institution and concludes that, rather than being at the bottom of the OECD rankings, we are merely “middle of the road”; in about 13th place.

With a view to geographical indications, IP Australia and Melbourne University have been building a world-first database linking Australian registered trade marks to a global atlas of place names. Apparently, this database will be released later this year.

On the research front, IP Australia has also released the 2017 edition of “IPGOD”. This year IP Australia should also release a database of pharma substances subject to patent term extensions. IP Australia has also made available the literature review on grace periods it commissioned from the University of California, Davis here (pdf). There is also a paper (pdf) on how grace periods affect innovation.

Download the report from here.

Minister’s press release here.

Exposure draft not stillborn

Back in the dying days of 2016, IP Australia landed us with the early Christmas present of an exposure draft of a proposed Intellectual Property Laws Amendment Bill 201? and associated regulations and explanatory materials.

After everyone (well, 17 different organisations) ran around getting in their comments so that IP Australia had something to do after they came back from the holidays …

… IP Australia has announced that the bill itself is still coming, but will be delayed until the Government has finalised its response to the Productivity Commission’s Final Report on Intellectual Property Arrangements.

IP Australia explains:

This is because if any legislative amendments are required as a result of the Government’s response, two intellectual property Bills might be in Parliament at the same time, leading to great complexity and uncertainty.

In the meantime, you could spend World IP Day (or what’s left of it) reviewing the sterling efforts of those brave souls who responded to the call for comments.

Accor gets its trade marks back

Accor has trade mark registrations for “Cairns Harbour Lights” and “Harbour Lights”, which it used to promote accommodation at the Harbour Lights complex in, you guessed it, Cairns. It sued Liv Pty Ltd which was renting out apartments owned in the complex by others.

Amongst other things, the trial judge had held that “Cairns Harbour Lights” should be expunged from the Register and the registrations for “Harbour Lights” should be amended to remove some of the services including “accommodation rental services” and “rental of accommodation”. Liv, however was found to infringe through the use of:

(a) “Harbour Lights Cairns”; and

(b) “cairnsharbourlights.com.au”; and

(c) “harbourlightscairns.com.au”; and

(d) “harbourlightscairns.com”.

The Full Court has now allowed Accor’s appeal, revoking the trial judge’s orders to expunge “Cairns Harbour Lights” and remove some of the services for which “Harbour Lights” is registered.

At 360+ paragraphs, more detailed consideration will have to wait.

One interesting aspect is that the Full Court confirmed that Liv’s use of “keywords” (really metatags) in the source code of its website was trade mark use and so infringing:

323 The title used in the source data is “Cairns Luxury Accommodation – Waterfront Apartments – Harbour Lights – Cairns Queensland”. The primary judge finds that the use of the words “Harbour Lights” in that title appears to be merely a description of the waterfront apartments referred to in the title: PJ at [434]. As to the use of the keyword “Harbour Lights” (as described by the primary judge at [430] and quoted above), the primary judge regarded that use as also a reference to the apartments as those words appeared in the context of surrounding words such as “Cairns apartments”, “waterfront, luxury apartment” and “harbourside”. Thus, the words were not used as a badge of origin: PJ at [434].

324 The other words used in the source data as recited at [430] by the primary judge are these:

  “content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short-term rental”.

325 As to those words, the primary judge finds that the use of the words “Harbour Lights Apartments” in that phrase was, effectively, use as a business name for a business which offers “accommodation for letting and short?term rental” thus operating as a badge of origin to distinguish Liv’s services from others: PJ at [435]. Such use is use of a mark substantially identical with and deceptively similar to each of the registered trade marks in suit. It is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [436]. (emphasis supplied)

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd
[2017] FCAFC 56 )Greenwood, Besanko and Katzmann JJ)

CLIPSO CLIPSAL-ed

You may not be surprised to read that Perram J has found that CLIPSO is deceptively similar to CLIPSAL for electrical goods in class 9. This had the consequence that Clipso’s registration for “CLIPSO” was expunged from the Register and CLIPSO itself was found to infringe prospectively. Clipsal’s trade mark registration for the shape of its ‘dolly switch’, however, was not infringed by Clipso’s products.

A significant issue in the case was whether Clipso’s principal, a Mr Kader, was to be believed about how he came up with the mark. Perram J found he was not. Perhaps the most interesting feature of the case, however, is the market by which the issues fell to be assessed.

Some background facts

Clipsal has registered CLIPSAL as a trade mark in respect of all goods in class 9. While it and its predecessors claim to have been using the mark since the 1920s, the registration it relied on in this proceeding dates from 1989. It currently markets some 14,668 electrical products under the trade mark and, in 2011, its annual sales exceeded $500 million. Clipsal had some 77% of the market; its nearest competitors having only 11% each. Clipsal also has a shape mark registered for the shape of its dolly switch:

Clipsal’s Dolly Switch trade mark

in respect of ‘electrical wiring accessories which incorporate a rocker switch … including dimmer switches….’

Mr Kader had been importing electrical accessories since about 2005. The CLIPSO mark came into use, however, in 2008 and Clipso achieved its registration in respect of a range of class 9 goods, principally electrical switches and the like, from October 2008.

The market by which deceptive similarity assessed

Many of Clipsal’s products, and most if not all Clipso’s, are what is known in the trade as ‘Bakelite’. These are (generally) plastic products such as switches, power points and other electrical products. A significant feature of these products is that by law they can be installed only by licensed electricians. Thus, a key plank of Clipso’s defence was the nature of its goods which, it said, were essentially bought by electrical wholesalers and electrical tradies, who were not confused by the two trade marks. CLIPSAL, it was argued, was so famous that no reasonable tradie would mistake CLIPSO for it.

Perram J began by noting trade mark authority had held that an infringer’s conduct fell to be assessed in light of its effect on ordinary purchasers of the products in suit. His Honour noted that misleading or deceptive conduct under the ACL fell to be assessed by reference to the ordinary and reasonable consumer.[1] Acknowledging that other cases may lead to different conclusions, however, in the context of this case Perram J considered that Clipso’s conduct fell to be assessed under all heads according to its impact on the ordinary and reasonable consumer.

Perram J accepted that a large part of the market for Clipsal’s products were electrical wholesalers and electrical installers. For many people having a home or office built, the issue was whether there were light switches, their positioning and number. The actual purchasing decision was left to the builder or contractor. However, Perram J found that there was a (relatively small) but not insignificant section of the general public who were interested in such matters and did take into account the trade source of the products that were being installed in their building and so specified the products they wanted their contractors to install, non-purchasing end-consumers.[2]

A key factor in his Honour’s conclusion on this point was the extent and length of Clipsal’s marketing efforts directed to the general public, not just the trade. In addition to the usual forms of advertising, this included a software program, Cipspec, which Clipsal installed in showrooms and its consultants used to work through with customers the placement and appearance of various CLIPSAL products. At [122] and [123] of his Honour’s reasons, Perram J accepted:

However, the evidence of these witnesses (the marketing director, Mr Quinn, a store manager of an electrical wholesaler, Mr Kalimnios and the electrical wholesaler, Mr Micholos) nevertheless persuades me that the applicants’ efforts in bringing end-consumers into the process as part of its supply chain strategy are likely to have had some success. The evidence of Mr Kalimnios and Mr Micholos (referred to later in these reasons) was attacked on the basis that the firm for which they worked, P&R Electrical, was not independent of the applicants. It is not surprising that an electrical wholesaler might have a substantive commercial relationship with the market leader in electrical accessories, but I would not describe such a relationship as lacking independence. In any event, I do not think that the evidence of either man was adversely affected by this matter.

One is left in the situation then that the only evidence of the success of the strategy of seeking to increase demand at the consumer end of the market is the existence of the strategy itself. Although I am prepared to accept that some end-consumers do indeed purchase switches and sockets themselves, I do not accept that generally these are the same people who are involved in, or the targets of, Mr Quinn’s supply chain strategy. As best I can surmise, they are instead a small group of people who decide to buy Bakelite products to have an electrician install them, or possibly even a smaller group of unlawful renegades who buy Bakelite products to install themselves.

His Honour was unable to quantify how significant the involvement of such end-users in the market was, but at [129] considered it was not de minimis:

… one is still left with little compelling evidence that any of the end-consumers targeted by the strategy exist beyond the strategy itself and the amount spent on it. I have no particular difficulty describing the strategy as plausible. One can well see that there are likely to be some people who care very much about what the light switches and sockets installed in their homes are to be, whilst there will be others who are benignly indifferent. Amongst the first class, it requires no great mental athleticism to see that their fascinations are likely to be with the Bakelite products at the premium end of the market. Can I infer from these observations that such a class exists and in numbers which are significant? I believe that I can and I do. The widespread fascination with home renovations in some quarters is reflected in the programming that appears on popular television every week. I do not believe that Mr Quinn’s strategy of creating demand and driving it back up the supply chain is some quixotic venture which is pointless. To the contrary, I am prepared to infer that a significant portion of persons building a new house or renovating an existing dwelling do care about which Bakelite products are used.

It was not necessary that these end-users be the people who actually bought the goods in question; it was sufficient that they gave instructions for them to be purchased such as through their contractors. The size of this segment of the market was sufficient to qualify as ‘substantial’. The relevant market, therefore, was a segmented one consisting of electrical contractors, electrical wholesalers and ‘non-purchasing’ end-consumers.

One consequence of this conclusion was that Perram J considered the parts of the market consisting of electrical contractors and wholesalers was a specialised market which would require expert evidence about the conduct and purchasing habits of people in those trade channels. That was not be the case for that part of the market comprised of end-users.

For that part of the market, Perram J went on to hold that CLIPSO was deceptively similar to CLIPSAL. Perram J considered that the two words shared the same root and had very similar pronunciation – the primary stress would fall on the first syllable and the final syllable of both words would be unstressed. There was also expert evidence that some people might perceive CLIPSO as an hypocristic” for CLIPSAL.[3]

As noted above, Clipso argued that CLIPSAL was so well-known in the trade that there would be no confusion. Perram J rejected this on several grounds. First, in the context of s 44 resort could not be had to reputation except where the mark was so well-known as to be ubiquitous and, notwithstanding its market penetration, Perram J was not prepared to find CLIPSAL fell into that exceptional category.[4] Secondly, as his Honour had already held, the market was not limited to those in the trade but also included ordinary (non-purchasing) consumers. Thirdly, there was in any event evidence from people in the trade (well, at least one) that, while they were not necessarily confused, they were caused to wonder whether there was some connection between the two trade marks.[5] Consequently, CLIPSO was deceptively similar to CLIPSAL even for the segments of the market comprised of those in the trade.

Cancellation

These findings together with Perram J’s rejection of Mr Kader’s claims about how he chose the name CLIPSO meant that the CLIPSO registration was cancelled pursuant to s 44, s 60 and s62A.

Mr Kader had claimed that he chose the name while leafing through the list of goods in class 9 in the International Classification and noticing some references to “clips”. He also claimed that he knew very little if anything about CLIPSAL when he applied to register CLIPSO. Perram J found Mr Kader was lying about this based on a number of factors including the strength of Clipsal’s position in the market, Mr Kader’s involvement in the market for at least 3 years and, amongst other things, the fact that each day his trip to work involved passing a very large CLIPSAL hoarding.

Infringement

As s 122(1)(e) provides a defence to trade mark infringement when the sign used is itself a registered trade mark and is being used in respect of the goods for which it is registered, Clipso could not in fact infringe until Perram J’s orders cancelling the registration of CLIPSO were effected on the Register. Therefore, injunctions only would be available.

However, Perram J did go on to find that Clipso’s use of CLIPSO also contravened the prohibitions on misleading or deceptive conduct under the ACL and passing off, but only insofar as the public consisted of (non-purchasing) end-consumers. As Perram J considered those actually engaged in the trade would not be misled or deceived, but only caused to wonder if there was a connection, there was no contravention in respect of those segments of the market.

Use of a shape trade mark

Perram J found that Clipso’s dolly switch very closely resembled Clipsal’s dolly switch which was depicted in its registered trade mark. Nonetheless, his Honour considered Clipso did not use its dolly switch as a trade mark. Perram J accepted that there were many shapes a dolly switch could take so that Clipso’s dolly switch was not dictated by function. Nonetheless, it was not used as a trade mark. At [154], his Honour explained:

Be that as it may, I still do not think that the first respondent was using the switch as a trade mark. Generally speaking, Clipso products were packaged in plastic sleeves emblazoned with the Clipso logo, and then placed in a cardboard box also emblazoned with the Clipso logo. There is no doubt that the word CLIPSO was being used as a badge of origin, which rather detracts from the idea that the switch located within the packaging could also have been operating as a badge of origin.

Perram J was not prepared to find that the shape of the dolly switch itself conveyed an association with Clipsal based on the sheer volume of sales of the product. This was so even though Clipsal’s packaging often included a statement that “The shape of this dolly switch is a trade mark of [Clipsal]”.

Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60


  1. Perram J noted that there could be subtle differences also between passing off and the ACL, but it was sufficient to proceed in this case on the basis that the same test applied for both actions notwithstanding their different bases.  ?
  2. There were also end-consumers who actually bought the products themselves, but they were considered too small a segment to qualify as ‘substantial’.  ?
  3. Apparently, this refers to the practice, particularly prevalent amongst Australians, of modifying words colloquially to suggest familiarity such as “kiddo” for “kid”.  ?
  4. Bridling at [179] – [180] against even that scope for reputation permitted by Henscke.  ?
  5. Relying on the Full Court in Vivo v Tivo.  ?

Productivity Commission’s Final Report

Updated to fix some broken links

The Productivity Commissions’s final report into “Intellectual Property Arrangements” has been published.

An overview and  recommendations is here.

The full report is here.

The key points sign off with a stirring call to action – or harbinger of what’s to come:

Steely resolve will be needed to pursue better balanced IP arrangements.

The Government has announced it is undertaking further consultations with us about the Commission’s recommendations and wants to hear your views by 14 February 2017. I wonder how many bunches of roses they will receive?

 

Intellectual Property Laws Amendment Bill 2017 – exposure draft

IP Australia has published an exposure draft of an Intellectual Property Laws Amendment Bill 2017 and the proposed accompanying regulations, explanatory memorandum and statement. So that everyone at IP Australia has something to do when they come back from their summer hols, you have to get your comments in by 22 January 2017.

A large part of the changes seem to be about aligning the administrative processes under the different statutory regimes According to the EM:

The patents, trade marks, designs and plant breeder’s rights (PBR) systems have a number of different administrative processes and rules specific to each IP right. A number of these differences are unnecessary or too onerous. Some processes take too long to resolve. This needlessly increases complexity, uncertainty and cost for users of the IP system.

This Bill will align and streamline the processes for obtaining, maintaining and challenging IP rights. Using similar processes for the different IP rights will make the IP system simpler and assist businesses dealing with more than one right. A simpler IP system will decrease administration costs for the Australian Government and reduce the regulatory burden for businesses that use it. The Bill will also enable greater use of electronic systems to manage and monitor IP rights.

A laudable objective! But, there are some 23 Parts and 596 items in the exposure draft bill alone. However, lots of them are plainly necessary changes such as replacing “reject” with “refuse” in the PBR Act, but there are others which will have more impact.

Overall, the broad topics addressed are:

  • Part 1 relating to renewals and terminology
  • Part 2 relating to re-examination and re-consideration
  • Part 3 relating to extensions of time
  • Part 4 relating to written requirements
  • Part 5 relating to the filing requirements
  • Part 6 relating to Official Journals
  • Part 7 relating to amendments of applications or other documents
  • Part 8 relating to signature requirements
  • Part 9 relating to computerised decision-making
  • Part 10 relating to addresses and service of documents
  • Part 11 relating to examination of patent requests and specifications
  • Part 12 relating to requirements for patent documents
  • Part 13 relating to acceptance of trade mark applications
  • Part 14 relating to registration of designs
  • Part 15 relating to unjustified threats of infringement
  • Part 16 relating to ownership of Plant Breeder’s Rights and entries in the Register
  • Part 17 relating to trade mark oppositions
  • Part 18 relating to seizure notices
  • Part 19 relating to publishing personal information of registered patent or trade marks attorneys
  • Part 20 relating to (criminal) prosecutions
  • Part 21 relating to the Secretary’s role in the Plant Breeder’s Rights Act
  • Part 22 relating to updating references to Designs Act
  • Part 23 abolishing the Plant Breeder’s Rights Advisory Committee.

I have no hope of trying to cover all that. Some of the things that caught my eye:

Part 15 introduces substantive changes to “unjustified threats”. The provisions in the Trade Marks Act will be amended to remove the defence of bringing infringement proceedings with due diligence. This will bring the trade marks regime in line with that for patents, designs and copyright. A corresponding regime is to be introduced for PBR.

Part 15 will also introduce a right for a victim of an unjustified threat to seek additional damages. What will be a flagrantly unjustified threat should be fun to explore.[1] Curiously, this remedy is not proposed for copyright.[2]

Part 13 proposes to reduce the period for acceptance of a trade mark, but expand the grounds for deferment. Items 421, 423 and 425 of the exposure draft regulations propose to reduce the period under reg. 4.12 from 15 months to 9 months after an adverse first report. However, item 427 inserts a new ground for deferring acceptance on the basis that:

(1A) The Registrar may, at the request of the applicant in writing, defer acceptance of an application for registration of a trade mark if:

(a) the request is made within the period applicable under regulation 4.12 or that period as extended under section 224, 224B or 224C of the Act; and

(b) the Registrar reasonably believes that there are grounds for refusing the application under section 41 or 177 of the Act; and

(c) the applicant is seeking to gather documents or evidence as to why the applicant considers there are no grounds for so refusing the application.

For renewal and re-examination (Part 2), apparently, it is possible to request examination of a registered design even after it has already been examined and certified. A formal re-examination process will be introduced. A re-examination regime is also proposed for PBR. The regimes for re-examination of patents and trade marks will also be clarified.

For re-examination (Part 3)

The EM says there are three broad issues with the current regimes:

> There are three broad issues with the extension of time system. The first issue is the differences in the number and types of extensions available between the IP rights. This increases complexity and confusion as to which extension is applicable and what evidence is required for supporting the request in a given situation. The second issue is the administrative burden placed on customers and IP Australia. Short extensions rarely have a significant impact on third parties, yet require the same declarations from applicants and assessment by IP Australia as long extensions. The third issue is that the protection for third parties that used an invention or trade mark while the IP application or right was lapsed or ceased can be inadequate or burdensome to obtain.  

The EM then says the main changes are:

  • repeal the ‘despite due care’ extension for patents;
  • remove the Commissioner’s and Registrar’s discretion for all general extensions, for all rights. This will
  • simplify the process and ensure compliance with the Patent Law Treaty and Patent Cooperation Treaty;
  • require all requests for extensions to be filed within two months of the removal of the cause of the failure to comply, to ensure there are no unreasonable delays;
  • improve the compensation for third parties that use inventions when a patent lapsed or ceased to reduce the burden on third parties;
  • expand the protection against infringement for third parties that use a trade mark while it was ceased to include while a trade mark application was lapsed;
  • introduce a streamlined process for short extensions, but ensure IP Australia can review and remake a decision on an extension of time;
  • prevent applicants from obtaining consecutive ‘short’ extensions for the same action;
  • provide general extensions and corresponding third party protection for PBRs.

Part 6 plans repeal of the requirements to publish information in the Official Journals, replacing them instead with an obligation to publish some information on the website or other electronic means.

Part 7 plans changes to the processes for amendments of information entered on the Registers and in documents. Perhaps alarmingly, these include plans to allow rights owners to make some changes to the Registers themselves!

Part 9 proposes introducing the potential for computerised decision making. An example of what is intended is the situation where an application has been accepted and the opposition period has expired without an opposition being filed. In such a situation “the computer” will “decide” to grant the right (presumably after,checking the fee has been paid). This seems intriguing, but you will have to go to a proposed legislative instrument to find out what decisions can be (have been) automated.

No doubt there will be something else to meet your curiosity lurking in the details!

You can find links to the exposure draft documents here. Remember though, get your submissions by 22 January 2017.


  1. Of course, in line with the existing provisions for additional damages for infringements, it may be possible to “score” even if the threat itself is not flagrant.  ?
  2. It can’t be because copyright falls under a different department because the exposure draft amends the Copyright Act to allow for electronic notifications (“notice” is also deprecated in this new simplified regime) relating to customs seizures – see Part 18.  ?