Posts Tagged ‘Trade mark’

Securities over IP

Thursday, January 23rd, 2014

IP Australia has published a reminder:

The transitional period to register any securities (charges, mortgages etc.) you may have taken out over IP ( registered trade marks, patents, designs etc.) on the Personal Property Securities Register expires on 31 January 2014.

The Personal Properties Security Register is a national register of claims to security interests over personal property (which includes our imaginary subject matters) in essence to provide a one stop shop for notice about such claims.

If you (or your client) has taken out a security over someone else’ intellectual property or where the other person’s intellectual property is being used as collateral for repayment, the security should be registered on the Personal Property Securities Register. In very broad terms: if the security isn’t registered in the Personal Property Securities Register, its claim to priority over any later security or even enforceability could be lost.

IP Australia’s warning points out that it is not enough to have registered the security interest in a register of IP such as the Trade Marks Register, the Patents Register, the Register of Designs or the Register of PBR. These registrations will not be transferred automatically to the Personal Property Securities Register. Morever, registration of the security interest on one or more of those IP Registers will not take priority over a later registration on the Personal Property Securities Register.

So, if you or your client have taken out such a security and haven’t registered it in the Personal Property Securities Register yet, ‘hurry, hurry, hurry; quick, quick, quick’ (with apologies to Alexis Jordan).

Although IP Australia’s warning relates specifically to the registered IP it administers, the legislation also applies to unregistered IP such as copyright.

IP Australia’s media release.

IP Australia’s general overview of PPS

PPS R.

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Superman KOs “superman workout”

Monday, June 3rd, 2013

DC Comics, the owner of rights to the, er, man of steel character, has successfully blocked an attempt the register “superman workout” for “conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)” in class 41. It did have to appeal from the Registrar of Trade Marks to the Federal Court and it did not win for the reasons you might think.

Like the Registrar, Bennett J rejected DC Comics’ opposition based on s 60. Her Honour accepted that the superhero was indeed well-known, but noted that the term “superman” was also an ordinary English word defined as such in both the Macquarie and Oxford Dictionaries:

[49] …. the use of the word “superman” in the Trade Mark is, or has become, descriptive. Use of a word originally associated with a particular trade source, may over time become descriptive of a class of goods or characterisations.

[50] When the Trade Mark is used without reference to any of the well known indicia associated with the DC Comics superhero and as contained in the registered Trade Mark or other trade marks registered by DC Comics, there is no likelihood that use of the Trade Mark would be likely to deceive or cause confusion by reference to the Superman word mark, or the subject matter of DC Comics’ registered trade marks. The public would not be caused to wonder whether “superman workout” came from the same source as the Superman character or DC Comics.

Accordingly, there was no real, tangile danger of people confusing use in relation to fitness workouts with the superhero.

When Cheqout began using “superman workout”, however, it also used it with this logo:

cheqout logo

cheqout logo

Bennett J was willing to infer that this logo was being used to strengthen the allusion to the Man of Steel and so appropriate the benefit of DC Comics’ reputation for Cheqout’s fitness services. That was not in accordance with acceptable commercial standards and so the application was made in bad faith contrary to s 62A.

In reaching that conclusion, Bennett J adopted the approach previously taken by Dodds-Streeton J in the Tennis Warehouse case. Bennett J emphasised that Dodds-Streeton J rejected a submission that exploitative conduct alone could never constitute ‘bad faith’. Rather, it was the particular circumstances of that case, especially the US company’s failure to follow up its demands for 2 years.

DC Comics v Cheqout Pty Ltd [2013] FCA 478

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Raising the Bar update

Monday, January 21st, 2013

Following the conclusion of consultations about the draft Intellectual Property Legislation Amendment Regulations (the regulations to implement the “Raising the Bar” amendments), IP Australia has published a document outlining the outcomes of the consultation process.

The document outlines what IP Australia is proposing to do/implement in relation to:

 

Schedule 1

 

  • preliminary search and opinion
  • search fee
  • priority date
  • other things

 

Schedule 3

 

  • filing of evidence in oppositions
  • extensions of time to file evidence
  • confidentiality
  • fees for notice of intention to defenddefence (TM oppositions) (lid dip: Andrew Sykes)
  • cooling off period for patent oppositions (not in the public interest)
  • dismissing trade mark oppositions for inadequately particularised grounds
  • document service
  • no changes to basis for adding grounds / particulars to a notice of opposition
  • no change to costs provisions

 

Schedule 4

 

  • suspension regime for patent / trade mark attorneys will be retained

 

Schedule 5

 

  • customs seizure: regulations will be amended to require importers to provide full name, telephone number and address for service in ‘claim for release’ forms
  • email address will not be made mandatory

 

Schedule 6

 

  • applicants for patents will have 2 months to respond to a direction to request examination after examination has been deferred
  • acceptance period after 1st report on patent application has been issued will be reduced to 12 months
  • “IP Australia will not require a statement of entitlement at filing for standard patents (or at national phase entry for PCT applications). Instead, the statement will be required when the applicant requests examination, as part of the approved form.” Applicants for an innovation patent will still need to provide the statement when filing the application
  • The Commissioner / Registrar will retain discretion to decide whether hearings should be decided on the papers without oral presentation
  • Apparently, there are technical corrections that will be implemented to

Links to:

 

Public Consultation Update papers

IP Australia’s Press Release

 

 

IP Australia’s helicopter summary of Raising the Bar, more links and IP Australia’s summaries for patents, copyrighttrade marks and designs.

Patentology looks at the good news for SMEs and some of the things rejected, here.

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Raising the bar reg.s 2.2

Monday, October 15th, 2012

Dr Summerfield has updated his marked up version of the reg.s to reflect the second tranche of the exposure draft regulations, here.

He also draws attention to the shortening time frames the exposure draft regulations will introduce.

You still need to get your comments in by 21 November 2012.

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2nd tranche of Raising the Bar draft regulations

Thursday, October 11th, 2012

IP Australia today released the second tranche of exposure draft regulations implementing the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

This tranche deals with schedule 3 (reducing delays in resolving patent and trade mark applications) and schedule 6 (simplifying the IP system).

Comments still need to be submitted by 21 November 2012.

Go here, and scroll down (past the first tranche if you already have them).

Dr Summerfield prepared a marked up version of the regs as the first tranche would amend them and discussed the new search fee implications.

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similar to or capable of being confused with

Friday, December 23rd, 2011

Idameneo (No. 789) won its appeal from Symbion. The competing trade marks can be viewed here.

The Full Court agreed with the trial judge that the contractual restraint against using:

any Mark similar to or capable of being confused with any of the Trade Marks or which contain the words SYMBION

imposed a different standard to the trade mark infringement test of substantial identity or deceptive similarity. However, the Full Court did not treat it as a single over-arching test.

For the purposes of the outcome, however, the crucial point was that both companies were using their respective marks in different specialist markets. Hence it was important to consider how persons in the relevant specialist market would react to Idameneo’s sign:

  1. Here, although the Symbion registration does extend to diagnostic and imaging services, there was no evidence that the goods or services of Symbion and Idameneo would find markets in substantially common areas or among the same classes of people. To the contrary, the evidence established that each of the parties currently operated in distinct and different specialised markets. And, as we have found above, the Symbion marks, on the one hand, and the Idameneo mark, on the other, are not the same and do not closely resemble one another. Thus, although the Symbion marks had been used in the same sector as the Idameneo mark prior to the demerger in 2008 and for a time afterwards, they were always distinct and did not so closely resemble one another that there was a real risk of anyone being caused to wonder whether the respective marks identified or were associated with services that come from the same source.
  2. The parties must have intended in cl 5.5(b) that Idameneo not “use… any Mark … capable of being confused with any of” the Symbion registration or Symbion device mark as a restraint that protected Symbion’s legitimate commercial interests in those two marks themselves and the reputation and goodwill associated with them. While the Symbion device mark had been used to brand the Healthcare imaging business before the merger in 2008, by April 2010 only the Idameneo mark was used by Idameneo for all its imaging businesses, including Healthcare. Having regard to the lack of resemblance between the marks and the lack of any evidence of any possibility of confusion in the specialised markets, Symbion’s claim based on a breach of cl 5.5(b) must fail.

(emphasis supplied)

As the Court accepted that the contractual formulation must have a broader scope than the statutory test (albeit to no practical effect in this case), which formulation will you use when you are drafting a contractual restraint delimiting competing users’ respective fields of use?

Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164 (Rares, Gilmour and Dodds-Streeton)

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Trade marks and survey evidence in Australia

Friday, October 28th, 2011

Adidas is suing Pacific Brands, alleging that the latter’s use of 3 stripes on footwear infringes Adidas’ registered trade marks for the “3 Stripes” (the judgment doesn’t identify which trade marks or the Pacific Brands’ product(s) in question).

Adidas gave notice under CM-13 (this is .doc download link, but the terms of the practice note are also set out in the judgment) that it intended to conduct a consumer survey.

It would appear that what Adidas proposed to ask survey respondents was:
After setting out the proposed form and methodology of survey and control to be used the Notice set out the proposed survey questions as follows:
(a) Who do you think makes this shoe?
(b) Why do you say that?
(c) When did you last buy a pair of sports shoes?

Pacific Brands sought an order preventing the survey being undertaken or used. Pacific Brands argued that the survey was a waste of time and money because:

  1. it had conceded Adidas had a reputation in the 3 stripes trade mark in Australia; and
  2. whether or not the use of the stripes on Pacific Brands’ footwear was use as a trade mark or, if it was, was deceptively similar to Adidas’ trade marks,
were purely questions of law for the judge alone.
Robertson J refused to block the survey for those reasons at this early stage. His Honour considered that Gummow J’s observations in Interlego did not support Pacific Brands’ argument.
In support of this proposition, the respondent referred to Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 387-389. I do not so read the passages in the judgment of Gummow J, with whom Black CJ and Lockhart J agreed. It is correct to say that deceptive similarity is a question for the tribunal of fact and is not a matter for any witness to decide but, as the passage cited by Gummow J from Lord Diplock’s judgment in General Electric Co (USA) v General Electric Co Ltd [1972] 1 WLR 729 at 738 makes plain, to say that a question is for the tribunal of fact or to describe it as a “jury question” does not mean that evidence going to that question is impermissible.
It might also be said that s 80 of the Evidence Act creates a problem for it too. See Cadbury Scwheppes v Darrell Lea at [49] – [57].
Adidas is not out of the woods yet. It would appear that Pacific Brands have identified defects in the proposed survey itself. Robertson J indicated what Pacific Brands should have done is identify those defects as part of the CM-13 process.
What the defects may be is not identified (and his Honour was not necessarily agreeing that they were defects). At least questions (a) and (b) set out above seem to be the sort of questions which courts have typically found acceptable, at least since the Jif Lemon case, as they do not involve the survey respondent engaging in undue speculation. I guess we shall have to wait and see if anything further emerges.
Adidas AG v Pacific Brands Footwear Pty Ltd [2011] FCA 1205
x
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Phillip Morris sues Australia!

Tuesday, June 28th, 2011

Phillip Morris has announced that it plans to sue Australia under the Australia-Hong Kong (SA) Bilateral Investment Treaty over the planned plain packaging legislation.

What the Government is proposing to do

Under the proposed Tobacco Plain Packaging Bill 2011, tobacco companies would be required to adopt a prescribed form of packaging for tobacco products.

In its most recent form, this would involve all tobacco companies using the same olive brown colour for their packaging with large, graphic images and health warnings. Some illustrations here. The contemplated regulations would limit brand names to be positioned on the top, bottom and a designated position on the front of the box in Lucida sans serif font, point size 14. (See pp. 12 and 13 of the Consultation Paper (pdf).

The trade mark lawyers amongst us will notice that clause 15 of the proposed bill will preclude a registered trade mark from being removed for non-use resulting from the strictures imposed by the proposed legislation.

The announced intention is for the laws to come into full operation on 1 July 2012. The proposal is only in exposure draft form at this stage, with public comment being scheduled to have closed by 6 June. However, the Opposition has apparently indicated its support for the Government’s position.

What Phillip Morris claims

If you read a newspaper in Australia, you can hardly have failed to notice the advertisements taken out by the tobacco companies violently opposed to this plan. There is also a website.

Phillip Morris has taken matters a step further and lodged a notice of claim against Australia under the Australia-Hong Kong (SAR) Bilateral Investment Treaty.

Unlike Free Trade Agreements and WTO / TRIPS, apparently, companies can bring claims against a party (alleged) to be in breach of its treaty obligations, not just another country party.

It would appear that Phillip Morris is not just after compensation but also an order requiring Australia to suspend operation of the law.

Details about the basis of Phillip Morris’ claim are sketchy at this stage. According to Phillip Morris’ own News Release:

“The forced removal of trade marks and other valuable intellectual property is a clear violation of the terms of the bilateral investment treaty between Australia and Hong Kong. We believe we have a very strong legal case and will be seeking significant financial compensation for the damage to our business”.

The speculation is that Phillip Morris will argue that the proposed law is an expropriation of Phillip Morris’ investments (trade mark rights) without fair compensation: see Article 6.

According to its Press Release, Phillip Morris has apparently garnered support from an eminent Georgetown professor (and Harvard graduate) for its position.

The Government has previously denied its plans will breach its international obligations.

Assoc. Prof. Jurgen Kurtz at Melbourne University has a very interesting consideration of the issues, noting that there is case law which would support the Government’s position as well as a contrary line. Prof. Rothwell from the ANU also explores the issues. He also reportedly contends that Phillip Morris may well have lodged its complaint too soon as the bill is not law yet, although, presumably, that would not preclude another complaint at a later stage.

The News Release also indicates that a period of 3 months’ negotiating follows before an arbitration proceeding is implemented under the Arbitration Rules of the United Nations Commission on International Trade Law 2010. The process will not be a short one!

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How wide should injunctions be

Thursday, May 26th, 2011

Following on from his ruling that Idameneo’s use of its trade mark breached its contractual obligation not to use a trade mark capable of being confused with Symbion’s trade mark, Jessup J has granted an injunction:

The Respondent be permanently restrained, whether by itself or through its subsidiaries from using the Respondent’s Mark.

Three aspects for comment:

First, Symbion sought and his Honour refused to grant an injunction that Idameneo not use its trade mark or “any trade mark, device, brand or logo which is similar to or capable of being confused with” Symbion’s trade mark (i.e., reflecting the terms of the contractual obligation).

In support of that application, Jessup J was referred to a number of cases proclaiming that the usual form of order for infringement of an intellectual property right was an order restraining the respondent from infringing the applicant’s [intellectual property right]. His Honour pointed out, however, that none of those cases established that such an order should be made in the case of breach of contract as a matter of principle.

Jessup J accepted that such a wide injunction might be an appropriate exercise of discretion in a particular case. However, there was nothing in this case which warranted that course:

here is nothing in the facts – or in the dynamics – of the present case which would provide any basis for the suspicion that, if it were precluded from using its present mark, the respondent would devise some artful similarity of the applicant’s mark, or would “sail close to the wind” as it is occasionally said.  If the orders which I made on 13 May 2011 stand, the respondent will be obliged to rebrand its business, its sites and its stationery.  Nothing suggested by the applicant, and nothing which otherwise occurs to me, would give reason to suspect that the respondent would have the slightest interest in adopting a new logo or image which was confusingly similar to the applicant’s mark.  If, contrary to this expectation, the respondent were to do so, it is true that the applicant would be obliged to bring fresh proceedings, but I have little doubt but that the court would not then be readily forgiving of the respondent for failing to keep a sufficient distance between its own new mark and that by reference to which the applicant succeeded in this proceeding.

Secondly, despite the terms of the injunction, Jessup J supplemented it with a further order to:

remove and destroy all signage, corporate stationery, flyers, posters, leaflets, brochures and any other promotional, advertising and marketing materials (whether in hard copy or electronic format) and garments which bear the Respondent’s Mark and which are in the possession, power, custody or control of the Respondent or its subsidiaries

and to deliver up an affidavit confirming all that mayhem has taken place.

Finally, his Honour granted a stay of the injunction – for 6 months or, if Idameneo appealed, for 6 months from the date the appeal was concluded. There is no discussion of the reasons for the stay, so it appears to have been uncontroversial between the parties.

Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited (No 2) [2011] FCA 531

Thirdly,

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capable of being confused with the trade mark

Thursday, May 12th, 2011

Jessup J has ruled that Idameneo’s use of:

Idameneo's trade mark

does not infringe Symbion’s registered trade mark for:

Symbion's trade mark

(As registered, the trade mark is not coloured; it was generally used in the colours depicted. See s 70(3).)

However, Idameneo’s use of its trade mark did breach its contractual obligations.


On the trade mark infringement front, you might have been thinking like me, “Who would have thought?” It turns out, however, that what enabled Idameneo to escape was the nature of the services: medical imaging services. Although the customer, you or I needing an x-ray, pays the bill and has the service practised on us, the relevant public were the doctors (and the odd dentist) who referred the patient to the service. This constituted a specialist market within Lord Diplock’s definition :

My Lords, where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence, is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused.

By law, the doctor (and presumably the dentist) could not make a referral without providing the patient with the name and address of the service provider: i.e., they had to know who was going to provide the service.

It is rather a messy deal how Symbion came to license its trade mark to the corporate group of which Idameneo was a member. Under the terms of the licence, however, the licensee agreed (for itself and the other members of the corporate group which included Idameneo) by cl. 5.5:

Use of Similar Marks

Except as permitted by this deed, the [respondent] must not, and must ensure that each Licensee does not, use:

(a)       any Trade Mark; or

(b)     any Mark similar to or capable of being confused with any of the Trade Marks or which contain the words SYMBION or FAULDING,

as a trade mark, business name, domain name or otherwise anywhere in the world.

(emphasis supplied)

Jessup J was not prepared to treat the obligation as being 2 separate obligations: not to use similar trade marks or ones capable of being confused …. Rather, his Honour considered that the notion of ‘similar’ had to take colour from its context.

On the other hand, his Honour rejected Idameneo’s argument that the contractual obligation was no different to the test provided by s 10 for deceptive similarity for trade mark infringement:

36. …. The respect in which the test stated by the contractual provision conspicuously differs from that under s 10 is that it is concerned with similarity which is capable of causing confusion, whereas the section is concerned with resemblance which is likely to deceive or to cause confusion.  Here I think that the applicant has the better of the argument.  It is as clear as may be that the parties to the licence agreement were conscious of the circumstance that many of the marks referred therein were registered under the Trade Marks Act; and it may be inferred that they had an active appreciation of the requirements of s 10.  I have no reason to doubt that their choice of different language by which to express the prohibition in cl 5.5(b) was a conscious one.  I consider that for the court to conflate, as it were, the terms of that prohibition into those of s 10 of the Trade Marks Act would be to neutralise that choice, and would go against the parties’ intentions.

In [37], Jessup J went on to note that the contractual prohibition was part of the consideration Symbion had extracted in return for granting the licence and must be thought to have some intended value.

Applying the usual rules of visual comparison and imperfect recollection, the lower threshold established by capable of confusion compared to likely to deceive or cause confusion meant the contract had been breached.

Jessup J did accept that the setting in which the competing marks were used should be taken into account in deciding whether or not cl. 5.5 was breached. The facts that Idameneo used its mark for medical diagnotic imaging while Symbion used its mark for the wholesale distribution of pharmaceuticals, however, did not save Idameneo:

47 But I do not accept the respondent’s factual submission that the circumstances in which the respondent’s mark is used are so distinct from the business activities of the applicant as to leave no realistic scope for confusion by reason of similarity.  Both marks are used in the allied health sector: indeed, before 2008, the applicant’s mark was used by the respondent and its subsidiaries (then not part of the Primary group) in both the pharmaceutical and the imaging parts of that sector.  I think I am entitled to regard it as notorious that there is a degree of contact, at both the professional and the consumer levels, as between these parts, such as would make it quite unsurprising if the same people – to some extent at least – had occasion to encounter both the respondent’s mark and the applicant’s mark from time to time.  And there is some evidence that the respondent’s mark is used in settings, such as the premises of hospitals, where those who have regular business dealings with the applicant – pharmacists and the staff of hospital pharmacy departments, for example – might be expected to be found. …. (emphasis supplied)

Idameneo argued that cl. 5.5 should be read down so as not to apply to its use of its trade mark because it had been using its trade mark before Symbion’s trade mark had been developed and it was in use when the licence was negotiated. Thus, it argued it was unreasonable to read cl. 5.5 as applying to its continued use of the trade mark. Jessup J rejected this argument, noting the strictness of the test for implying terms into a comprehensive, professionally drafted written agreement. Moreover, Idameneo’s business appears to have been something of a sideline or relatively remote activity within the corporate group as a whole. Jessup J pointed out at [42]:

there is no evidence that the applicant … knew of the existence of the respondent’s mark in the period August-October 2008.

Thus, the conditions for implication of a term could not be made out.

Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited [2011] FCA 389

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