Talk on keywords, adwords and trade marks
For anyone who may find some value in them, I have posted the slides from my IPSANZ talk ‘Of Keywords, Adwords and Trade Mark Infringers at Slideshare.
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Appeal sinks luscious LIPS
One month after the appeal was heard, the Full Court has rejected Nature’s Blend’s appeal that Nestlé used Luscious Lips as a trade mark.
Nature’s Blend argued first that the trial judge had wrongly focused on the character of Nestlé’s use instead of the proper meaning of the Nature’s Blend mark. As the mark was registered for all confectionery, not just “lips”, it was said to be inherently distinctive. The Full Court, however, rejected this requirement and re-affirmed that the test was to examine whether or not the way Nestlé used the mark (the “impugned use”) would be understood by ordinary consumers as functioning as a badge of origin.
Nestlé’s Luscious Lips are part of its ‘Retro Party Mix’ pack. The expression ‘luscious Lips’ appeared only on the back of the packaging in the expression:
That’s right! All your old favourites are back, so put on those flares & get ready to party! Up to 7 lolly varieties including … cool COLA Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries.
You can see the front of the packaging at the product’s very own facebook page.
Nature’s Blend contended that the trial judge had improperly diluted the significance of the ‘luscious Lips’ expression on the Nestlé packaging by reference to the presence of other, more prominent brands.
This issue can be tricky because the Courts have long held that one does not take into account extraneous matters such as disclaimers or the presence of other trade marks when considering the question of deceptive similarity. On the question of use as a trade mark, it is permissible.
While the Full Court acknowledged that the fact that other trade marks were used more prominently on the packaging did not preclude ‘luscious Lips’ from being used as a trade mark, the characterisation of the impugned use depended on the particular usage in question in its own particular setting. In this case, the presence of ALLEN’s and Retro Party Mix did in fact undercut the likelihood that consumers would read ‘luscious Lips’ as a trade mark.
The Full Court also agreed that Nestlé had used the trade mark in good faith as a description.
Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 (Stone, Gordon and Mckerracher JJ)
Comment on decision at first instance.
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No copyright in newspaper headlines
Bennett J’s reasons for ruling that Fairfax does not hold copyright in the Australian Financial Review’s headlines have now been published.
In conclusion, Bennett J stated:
159 As to the subsistence of copyright in the contended works, I have reached the following conclusions:
- None of the ten selected headlines are capable of being literary works in which copyright can subsist.
- Fairfax has failed to prove that any of the ten selected Article/Headline Combination is a discrete work of joint authorship in which copyright can subsist.
- Copyright subsists in the Article Compilation and the Edition Work in each of the June and November editions as original literary works and this copyright is owned by Fairfax.
160 Reed takes the whole of each headline. As to whether Reed, in reproducing and communicating headlines of the AFR as part of the Abstracts, takes a substantial part of any of the contended works:
- Even if the Article/Headline Combination constitutes a copyright work, Reed does not take a substantial part of such a work.
- Reed does not take a substantial part of either the Article Compilation or the Edition Work.
161 Although it is not necessary to decide whether Reed is entitled to rely on the defences claimed, I nonetheless consider that:
- Reed’s conduct in reproducing and communicating the AFR headlines as part of the Abstracts is a fair dealing for the purpose of reporting news such that Reed’s conduct would not constitute an infringement of copyright by reason of s 42(1)(b) of the Act;
- Fairfax is not estopped from asserting that Reed’s reproduction and communication of AFR headlines in the Abstracts as part of the ABIX service amounts to infringement of its copyright in the contended works.
162 It follows that Fairfax’s application should be dismissed.
[160] is strikingly reminiscent of her Honour’s ruling at first instance in IceTV. As you will see from [161], her Honour also addressed the fair dealing defence and rejected Reed’s argument that Fairfax was estopped.
While the courts have been careful not to say there can never be copyright in film titles and the like, one wonders, if there wasn’t copyright in The Man Who Broke The Bank at Monte Carlo, whatever were they thinking?
The Australian (rather ironically given News Corp’s campaign) has some fun at Fairfax’ expense picking out some key points and repeats Alan Kohler’s question what would they have achieved commercially even if they succeeded?
Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984
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Electronic filing / service in the Office (IP Australia)
Patentology looks at the problems that arise with serving documents in Opposition proceedings before the Commissioner / Registrar (i.e. IP Australia) (a) electronically and (b) outside business hours.
Obviously (well, not so obviously when you’re used to dealing with the pragmatic approach of the Federal Court), if the material is served outside business hours, it is not served until the next business day, but it may be even more complicated if you are trying to effect service electronically.
All very quaint and so 19th century, but fatal!
The rules are rather different than, for example, the postal rules which apply in a contractual relationship; but it isn’t really a contractual relationship.
Where personal service is not required, the Federal Court Rules (O7 r4 and 4A) permit service by document exchange, facsimile or email, however, they (O7 r7) require that the party on whom service is to be effected to have specified the facsimile number or email address to have been specified in a Notice. O7 r4 and 4A also make provision for the time of service. I suspect, however, that these are deemed times of service which would be displaced if one could prove an earlier time of service.
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More on ‘Whiskas Purple’ TM
Tim Golder, a partner at AAR, and Sandi Montalto have published an article with their take on the Federal Court’s recent decision directing that Mars’ trade mark application for the colour ‘Whiskas Purple’ proceed to registration.
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IPSANZ Annual Conference
IPSANZ’ Annual Conference is on over the weekend beginning 10 September, at Noosa.
Apparently, there are still some places available.
From the USA, Judge Kathleen O’Malley and Covington & Burling’s George Pappas are the headline speakers.
Siobhan Ryan and I will be talking on aspects of trade marks’ use in the trade marks session.
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WTR and new gTLDs survey
World Trademark Review is running an online survey to gauge understanding of ICANN’s proposed new gTLDS and get some insight into what people are doing to prepare for these.
If you are a trademark professional or in “marketing”, participate here.
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Injurious falsehood and also passing off
The tort of injurious falsehood (sometimes called malicious falsehood or even trade libel) has been largely superseded (but not totally extinguished) by passing off and the modern wrongs against misleading or deceptive conduct. In a helpful, practical primer, Jagot J has had to explore its operation as one of the issues in the Jack Brabham Engines case. There is also an elementary lesson to learn in passing off.
In overview, the case concerned 2 rival businesses engaged in developing car engines. They agreed to pool their resources and develop technologies through a new corporate vehicle, Jack Brabham Engines (JBE). The principals in the competitors became directors and shareholders and the great man himself was a shareholder. Things didn’t work out and one of the principals, Mr Beare, who had secured patents for technology he had developed earlier decided to invest elsewhere in competition with JBE.
Amongst other things, he published statements on his website and in ASIC documents which the applicants complained were injurious falsehoods. Jagot J rejected these allegations.
Her Honour pointed out at [246] that the tort required proof of 3 ingredients: proof that (1) the respondent has made a false statement, (2) that the respondent made the statement maliciously and (3) as a result the applicant has suffered actual damage.
Her Honour quoted Gleeson CJ on the difference between the tort and defamation:
The tort of defamation protects reputation, and it does so in a manner that involves a balancing of various considerations including the right of free speech. The tort of injurious falsehood protects against provable economic loss resulting from false and malicious statements.
Jagot J at [247] also endorsed the statement in Halsbury’s Law of Australia as a convenient summary of what is required for the statement to be malicious:
The false publication must have been made maliciously. A person who acted in good faith is therefore not liable. Malice is a question of motive, intention or state of mind and involves the use of an occasion for some indirect purpose or indirect motive such as to cause injury to another person. Malice may exist without an actual intention to injure. Malice may not be inferred from the fact of publication but will be inferred where the false publication was made with:
(1) an intent to injure without just cause;
(2) knowledge of their falsity; or
(3) reckless indifference to its truth or falsity.
No action will lie where the false publication was made with mere lack of care or with an honest belief in its truth. An honest belief in the truth of the statement will rebut any inference of malice.
The applicants failed on all heads for a wide variety of reasons. Some of the statements were not even pleaded. The applicants failed to prove that others were even false and, at every turn, the statements were not shown to be malicious because they were the honest beliefs or opinions of Mr Beare. There was also no proof of damage.
The difficulties of proving malice in particular highlight why, if the conduct is in trade or commerce, the tort has largely been supplanted by the fair trading laws such as s 52 (in the case of corporations) and s 9 / s 42 (in the case of individuals).
The applicants also alleged passing off from use of the names “Beare Technology Engine” and “Beare Head Technology”. The names were not registered as trade marks, hence any rights had to arise at common law.
The problem for the applicants here was that Mr Beare had used these names in his business before JBE was incorporated and, while he or his company had authorised JBE to use the names, JBE was unable to identify any assignment of the earlier business and its goodwill to JBE. As a result, JBE did not own the relevant reputation.
Jack Brabham Engines Limited v Beare [2010] FCA 872
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The Australian High Court on trade marks
Janice Luck and Peiwen Chen have published at the Fortnightly Review an analysis of the High Court’s recent rulings in the trade mark cases: Gallo v Lion Nathan (the Barefoot case) and Health World v Shin-Sun.
As Janice was one of the members of the Working Party whose review led to the 1995 Act and has been teaching trade mark courses at Melbourne Uni. for longer than she probably cares to remember, you should read it here.
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