Not using (but keeping) Pioneer

Prof. Mark Davison reviews Bennett J’s recent decision allowing Pioneer, by an exercise of discretion, to keep its registration for , even though it had no use of, or intention to use, the trade mark in respect of those goods.

Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135

In-house trade mark lawyer awards

The World Trademark Review has issued a call for nominations for its industry awards.

The nominations are sought for in-house trade mark lawyers and departments.

Further details here and last year’s awards here (pdf).  Have your say (nomination form) here.

Barefoot deeper into the drink

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 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.

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.

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)