Category: Trade marks

Urban (f)ale

war / / Trade marks

The Full Court has dismissed Urban Alley’s appeal from O’Bryan J’s rulings that URBAN ALE was invalidly registered as a trade mark and La Sirène’s use of URBAN PALE did not infringe URBAN ALE. The decision may provide some helpful clarification of the test of substantial identity and, perhaps, urges caution against his Honour’s conclusion that URBAN PAEL was not used as a trade mark.

Urban Alley had registered URBAN ALE for beer. La Sirène started selling a Farmhouse Style Urban Pale [beer] by La Sirène under this trade mark:

Not capable of distinguishing

The Full Court upheld O’Bryan J’s conclusion that URBAN ALE lacked any capacity to distinguish as essentially descriptive or laudatory. As Urban Alley had not used the term before it registered its trade mark, it was not registrable under s 41.

This was really just the result flowing from the facts arising on the evidence. So a successful appeal was always a steep hurdle.

Practice tip: if you are going to adopt something as a trade mark, it will be unhelpful to refer to it in marketing materials in terms like:

The signature Urban Ale sits somewhere between a classic Australian golden ale and a Belgian blonde, with pleasant tropical notes but a crisp, clean finish.  This is a premium beer for the people and is described as a ‘celebration of our great city, a tribute to the laneway culture and a blend of the old and the new’

and

Name: Once Bitter
Style: Urban Ale (Somewhere between an Aussie Golden Ale and Belgian Blonde)
ABV: 4-5%

One could be mistaken for thinking the trade mark was “Once Bitter”!

Deceptively similar to prior conflicting registration

Likewise, Urban Alley was unable to overturn O’Bryan J’s conclusion that URBAN ALE was deceptively similar to a prior registration for URBAN BREWING COMPANY and so invalid under s 44.

On this part of the case, Urban Alley argued O’Bryan J’s reasons for concluding the two marks were not substantially identical were inconsistent with his Honour’s conclusion that they were deceptively similar and so the latter conclusion was wrong.

In relation to substantial identity, O’Bryan J held that the inclusion of BREWING COMPANY in the prior mark conveyed a different meaning to ALE.

The Full Court rejected Urban Alley’s attack at [98] – [99]:

A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical. The primary judge’s observation must be understood as having been made in that light.


The test of deceptive similarity is fundamentally different. It is not a studied comparison. Rather, it is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect.

Thus, when considered from the perspective of deceptive similarity and imperfect recollection the differences which were apparent from a side by side comparison lost much of their significance. In that assessment, Urban Alley’s challenge overlooked the significance of URBAN being the first word of both marks and the close association in meaning of “brewing company” and “ale”. At [106], the Full Court explained:

The appellant also submitted that there is “no relevant trade mark resemblance” between the words “ale” and “brewing company”. This submission requires careful consideration. As the appellant’s submission recorded immediately above recognises, each compared mark must be considered as a whole. It is impermissible to dissect each mark to emphasise its disparate elements and then compare the disparate elements of each in order to reach a conclusion on deceptive resemblance. To start with, this would leave out entirely the impact of the common element “urban”. It would also ignore the synergy between the word “urban” and the other word(s) in each mark. This synergy contributes to the impression gained of each mark, which is carried forward into the relevant comparison between the two. This last-mentioned consideration brings into play the primary judge’s finding that there was a clear association in meaning between “brewing company” and “ale”. Given that clear association, coupled with use of the common element “urban”, it is understandable that the primary judge reached the conclusion he did on the question of deceptive similarity.

It might be thought that the strong emphasis on the narrow scope of the substantial identity test, requiring a studied side by side comparison, is a very welcome brake on the ruling in Pham Global.

No infringement

Having ruled that Urban Alley’s trade mark was invalidly registered on two alternative grounds, their Honours pointed out that Urban Alley’s appeal against the finding that La Sirène did not infringe must fail. So, it was strictly unnecessary to consider whether La Sirène’s use of “Urban Pale” would have been an infringement.

Speaking obiter dicta, the Full Court emphasised that O’Bryan J’s finding that La Sirène did not use URBAN PALE as a trade mark, despite its prominence, turned very heavily on the “overwhelmingly descriptive” nature of the expression. At [119], their Honours said:

Thus, it is entirely possible—indeed likely—that, absent the finding of the Word Mark’s lack of inherent adaptation to distinguish because of the ordinary signification of the word “urban”, the primary judge would have come to a different conclusion on trade mark use in relation to the respondent’s use of the name “Urban Pale” on the depicted label.  This is particularly so when regard is had to the prominence and location of the name “Urban Pale”.  Such use would normally be regarded as persuasively suggesting trade mark use, a consideration which his Honour seems to have recognised in the next paragraph of his reasons, where he said:

205         It is apparent that the labelling of the La Sirène Urban Pale product features the words “Urban Pale” in large lettering and an emboldened font.  It is the most prominent name on the labelling.  However … I do not consider that that prominence converts the essentially descriptive name into a trade mark indicating the source of origin of the product.

Even so, it will be necessary to treat the finding that Urban Pale was not used as a trade mark very carefully and confined to its particular facts. On this part of the case, the Full Court concluded at [120]:

Be that as it may be, our resolution of Grounds 1, 2 and 3 of the appeal adversely to the appellant necessarily means that Ground 5 of the appeal should be dismissed, as we have said.

Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186 (Middleton, Yates and Lee JJ)

Monster strike …

war / / Trade marks

… out, again. Stewart J has dismissed Monster Energy Corporation’s (MEC) opposition to the registration of MONSTER STRIKE by Mixi for computer gaming.

Mixi Inc. applied to register MONSTER STRIKE as a trade mark in Australia for computer games and software in international classes 9 and 41.[1] MEC lost the opposition before the Registrar and appealed.[2] okMEC argued that, because of MEC’s reputation in its MONSTER marks, Mixi’s use of MONSTER STRIKE for computer games and software would be likely to deceive or cause confusion.

Mixi launched its Monster Strike game in October 2013. By June 2014, there had been 8 million downloads and, by June 2018, more than 44 million downloads. Mixi had discontinued the English language version in 2017, so that the game was available only in Japanese or Chinese after that.

The priority date for MONSTER STRIKE was 27 December 2013, so that was the date MEC’s reputation in MONSTER fell to be determined and assessed.

MEC’s reputation

MEC claimed reputation variously in:

(1) MONSTER

(2) MONSTER ENERGY

(3) MONSTER RIPPER

(4) MONSTER REHAB

(5) MONSTER GIRL

(6) MONSTER ARMY

(7) MONSTER ASSAULT

(8) MONSTER KHAOS

and two stylised “M”s known as the M icon or M claw (illustrated below).

MEC did have trade mark registrations for these in Australia, but the goods and services were not for computer games and software.

MEC had launched the original “Monster” energy drink in 2002, with the product first being introduced into Australia in July 2009.

By the priority date, MEC had sold more than US$19 billion worth of drink in the USA and US$23 billion worldwide. Sales in Australia between 2011 and 2013 ranged from US$27 million down to US$15 million. More than 78 million cans of drink had been sold in Australia; of which 40 million were the Monster Energy Original product. The drinks were sold in Australia in over 10,000 outlets including grocery stores, convenience stores, petrol stations, bars, pubs, cafes and take-away food outlets.

MEC’s main witness conceded that there had not been any sales of Monster Assault or Monster Khaos in Australia before the priority date.

You probably already know what the cans look like, but Stewart J included images of typical get-up:

  • Black drink can, large green "M" like 3 claws, MONSTER with a line through the "o" and "Energy", all arranged in a vertical line
    Monster Energy Original
  • Black soft drink can with yellow/green cloud, the "M" logo like 3 claws in black against the cloud, MONSTER below and underneath it "Rehab" in a slimy green
    Monster Rehab

It was not in dispute that MEC did not provide computer software or games under its trade marks. MEC relied, however, on the fact that most of its advertising and promotional expenditure was spent on endorsements of athletes, gamers and musicians and sponsorships of sports, eSports (that is, competitive video gaming) and music festivals.

Between 2002 and 2013, MEC had spent more than US$2.5 billion on advertising, marketing and promotion. In Australia, MEC had spent US$50 million, with expenditure between 2011 and 2013 being US$31.4 million. Apparently, US$7.15 million was expenditure on athletes, musicians, competitions and other events.

MEC argued the target audience for its promotional activities were 18 –35 year olds, which was the same demographic as for computer games.

In addition to sponsoring the Evil Geniuses eSports team (starting in 2012), MEC had social media pages dedicated to gaming. Its Monster Energy Gaming page on Facebook had been operating since 2010. It had one million likes by the end of 2013; garnering about 10,000 “likes” from Australia each month between June and December 2013. MEC also used the Twitter handle @monstergaming.

There had also been extensive placements of MEC products, merchandise and advertising in video games, including t-shirts or other clothing, billboards and even some characters drinking MEC cans of drink. MEC had also sponsored at least one gaming developer, Ali-A, who had over 2 million subscribers to his YouTube channel.

In addition to the sports or gaming specific activities, MEC also engaged in the conventional provision of hospitality at pubs, sporting events, trade shows, gaming stores. The staff wore branded clothing, drove in branded vehicles and handed out branded samples.

MEC’s website had thousands of visits from Australians. Its main Monster Energy Facebook page had 24 million likes, of which 400,000 were Australians. The Monster Energy Girls Facebook page had 245,000 visits including 21,232 from Australia. There was a Monster Energy Facebook page with 3,450 visits from Australia; the Monster Energy Instagram account had almost 32,000 Australian followers and the main Monster Energy YouTube site had over 80 million views worldwide, with some 3.6 million views from Australia.

What MEC’s reputation was in

Unsurprisingly in the light of this evidence, Stewart J accepted that MEC had a well-established reputation in Australia. However, his Honour considered the reputation was closely bound up with the M claw mark and also generally involved the use of Monster and Energy together in combination.

From over 3,000 pages of written evidence, including photographs, MEC was able to identify only limited instances where MEC had used the word Monster on its own. For example (look closely):

Monster Energy drink label

At [146], Stewart J explained:

Many other cans of Monster energy drinks had the same or a similar slogan printed on them. In each instance the writing is small and the MONSTER® is dwarfed by the device marks which are distinctive and catch attention. I do not consider this use of MONSTER® to have generated any particular reputation for the use of the word MONSTER on its own.

His Honour considered that other references to Monster alone were really shorthand references to Monster Energy, which is “really the brand that has a strong reputation.” Some comments on social media by consumers referring only to “Monster” were similarly shorthand.

Accordingly, his Honour concluded at [151]:

In the result, the evidence does not support a conclusion that the MONSTER word mark on its own had any particularly significant reputation in Australia at the relevant time. Any reputation of the word MONSTER is derived from the M claw, stylised MONSTER and the MONSTER ENERGY word mark. It is these that create the association in the minds of consumers.

MEC’s trade marks Monster Assault, Monster Khaos, Monster Ripper, Monster Army, Monster Rehab had either not been used in Australia or, if used, Stewart J considered there was no evidence to support a conclusion that they had developed a significant reputation in Australia.

Stewart J accepted that MEC reputation was well-known and that its (stylised) Monster marks were associated with a range of eSports-related products and activities. However, that association was as “a sponsor” or “supporter” and not as a provider or publisher of video games themselves. At [159] – [162]:

[159] MEC submits that by the priority date, Australian consumers in MEC’s target demographic had a wide awareness of MEC’s Australian marks as emanating from a company with a long-standing and highly active presence in gaming and eSports. It further submits that MEC was strongly engaged with the international gaming community through its dedicated gaming internet sites and social media channels; closely connected with the generation of gaming content creators through its association with eSports athletes, teams and other content creators; and actively involved in the gaming industry through its promotion of, and licensing of its marks to appear in, a number of popular games.

[160] Those submissions can be accepted insofar as they apply only to the M claw and the words MONSTER and ENERGY in association with that mark. It can also be accepted that the marks were well-known in Australia, and that they were associated with a range of gaming and eSports-related products, programs and activities. However, the nature of that association and hence reputation was as a sponsor and supporter. Very often MEC’s marks, showing its sponsorship, appeared alongside many other well-known marks such as Vodafone, Samsung, Toshiba, Blackberry, Alliance and Pirelli, all apparently the names of co-sponsors. Of those with whom the marks had a reputation, there would have been a keen awareness that the trader behind the marks traded in energy drinks and not in other goods or services. MEC sponsored and promoted gaming and eSports events, and for that purpose it published material about such events, but its marks did not, in my assessment, have a reputation as a brand of origin for the provision of gaming event or publishing services; the reputation remained one of sponsor and promoter.

[161] In my assessment, an ordinary consumer would understand the presence of MEC’s Australian marks on athlete uniforms, equipment, event signage, apparel and the like to be for the purpose of advertising and promoting MEC’s energy drinks, and not to be functioning as a brand, or a source of trade origin, for the particular equipment, uniform, signage and apparel upon which the marks appear. This is similar to the findings in Qantas at [174] and [177]. Similarly, MEC’s sampling activities conducted at sports events and other venues, including by the Monster Girls, would be understood by the ordinary consumer to have been conducted for the purposes of advertising and promoting its energy drinks.

No real, tangible danger of confusion

At [167], Stewart J concluded there was no real, tangible danger that a reasonable number of people would be caused to wonder whether or not MONSTER STRIKE was associated with MEC in some way.

First, Stewart J considered that the very different goods and services was significant. As a result, the risk of confusion was “inevitably very much less” than it might have been if they were “the same or significantly overlapping.”

Secondly, the competing trade marks were distinctively different, bearing in mind the stylised or composite form in which MEC’s reputation lay. “Monster” was part of that form, but MEC had not established a significant reputation in that form.

Correspondingly, MEC’s arguments based on the similar linguistic structure or brand extension failed as its evidence did not establish a reputation in the various extensions – Monster Assault, Monster Ripper, Monster Khaos, Monster Army.

Thirdly, the evidence showed that at least 40 other traders had registered trade marks for or including MONSTER in respect of video games etc. While there was no evidence of any use of these, at [174], Stewart J was prepared to infer that some of these at least would have reputation. However, this played only “a small role” in reducing the potential for confusion.

Fourthly, the likely public, being young men and women interested in computers and gaming, was “brand-savvy and not gullible or easily confused.”

Finally, there was no evidence of actual confusion.

Strike 2

As the claim under s 42(b) requires demonstrating a likelihood of deception, not just mere confusion or being caused to wonder, you won’t be surprised that it failed too.

Stewart J’s decision is the second in a year or so in which MEC has failed in its attempt to extend its rights from the field of energy drinks into what might be thought rather unrelated fields. The earlier decision, involving an infringement action against Rodney Jane’s use for tyres, is under appeal. I wonder if we have heard the last of this dispute too?

Monster Energy Company v Mixi Inc [2020] FCA 1398

  1. TMA No. 1242941. (For the attorneys amongst you, it was actually an IRDA through the Madrid Protocol.)  ?
  2. Monster Energy Company v Mixi, Inc [2017] ATMO 119.  ?

Consultations on protecting EU Geographical Indications

war / / Trade, Trade marks

IP Australia has published a Consultation Paper on a possible new Geographical Indications Right.

You probably know we are not supposed to call a fizzy or bubbly alcoholic beverage made from grapes “Champagne” unless it comes from that special part of France (that’s France in the EU, not Texas).[1]

This, and a range of other prohibitions, stem originally from the Australia-EU Wine agreement (and its successors) back in the 1990s which was supposed to give our wine producers much easier access to the EU market in return for respecting their cultural properties. (I’m not sure if anyone has ever undertaken an empirical assessment to see how that worked out.)

As previously reported, our Government and the EU are in the throes of negotiating a more wide ranging Free Trade Agreement. As part of those negotiations, the EU wants Australian law to significantly broaden the number and scope of EU “geographical indications”[2] which are protected to include a further 236 spirit (as in alcoholic beverages) names and 172 agricultural and other names.

The Consultation Paper is a further round in seeking input on this proposal. Now, it is important to note, that the Consultation Paper does state:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

It appears that, in addition to protecting any EU GIs ultimately agreed, what the Government is now considering would put in place a mechanism for registration of new or additional GIs as well.

The Consultation Paper itself sets out 11 questions on which comments are particularly sought:

Registering a GI

Q.1 What types of goods should be eligible for protection as a GI?

Q.2 Should GIs filed under a new system cover a single good or multiple goods?

Q.3 Are there particular safeguards that should be considered for a new GI right?

Q.4 Under what circumstances should two rights, for example a new GI and an earlier trade mark, be able to co-exist?

Q.5 What level of detail should be required for any conditions of use, such as production methods, boundaries and what it means for a product to come from the region?

Standard of protection vQ.6 Should a new GI right extend the international standard of protection for wines and spirits to all goods? Are there other practices that should be prevented?

Using a GI right

Q.7 Who should be able to apply for a GI in Australia?

Q.8 Should those who meet the requirements of a GI be able to use the GI automatically, or should they need approval from the GI right holder?

Enforcing GIs

Q.9 Should any user be able to enforce a GI or should it be limited to the GI right holder?

Q.10 Should criminal enforcement be available for GIs registered in Australia?

Costs and Benefits

Q.11 What would be the costs and benefits to Australian industry, producers, and consumers of creating a new GI right?

Did I mention, the Consultation Paper does make clear:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

The Consultation Paper mentions that a common thread in submissions from the earlier round was the need to ensure that GIs could not be used to stop the continued use of food names already in common use. It envisages that there would be an opportunity to oppose registration on the basis that the term is a common or generic name for “a plant variety or animal breed” in Australia.

It’s not clear if the grounds of opposition would be limited to common or generic terms which are names of a plant variety or animal breed, or they are just examples of what might be common or generic terms.[3] (It should be noted that the wine producers who were using “champagne”, “burgundy”, “claret” and the like didn’t get to oppose those GIs.)

Moreover, p. 2 of the Consultation Paper does note that in the previous round of consultations people could object to the EU’s proposed lists of further GIs but, if Australia agrees to protect any of them as part of the FTA, they will not go through the application and opposition process. They will go straight on to the Register.

But remember:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

On the subject of the Register, the Consultation Paper envisages that there would be a new Register created through amendment of the Trade Marks Act 1995. Hopefully, that would bring in all the currently protected GIs as well. Hopefully, it would also be more integrated and searchable than the current hotch potch.

On the more positive side, the Consultation Paper does say (p.3) that protection would not extend to a term like “camembert” alone if the GI registered was “Camembert de Normandie”.

On the other hand, the EU is seeking protection against uses which “evoke” a registered GI. On p. 5, the Consultation Paper notes that:

in the EU a producer has been prevented from selling whisky labelled ‘Glen Buchenbach’ because ‘glen’ (meaning ‘valley’) is a term used in Scotland and was found to evoke the GI ‘Scotch Whisky’. As another example, cheese sold in packaging with images of windmills and sheep was found to evoke the Spanish GI ‘Queso Manchgeo’[4] because those images are typical of the region in Spain where the GI is produced.

Maybe camembert is made in other parts of France than Normandy? What happens if that were to change and only the Normandy producers could use camembert “over there”? How would you test whether (presumably) Australian consumers would associate windmills and sheep with Don Quixote country? Don’t the Dutch have sheep? Would it matter what kind of windmill? Would the test be what Australian consumers would understand?

According to the Consultation Paper, consultations are open until 30 November 2020. In addition, there:

  • is GI Survey (you may have to agree to the privacy policy etc. before you get in);
  • will be a Webinar – outline of GI consultation on 30 September at 12 noon to 1pm
  • will be a Virtual Roundtable – Standard of protection on 13 October at 12 noon to 1pm
  • will be Virtual Roundtable – Australian use of GIs on 15 October at 12 noon to 1pm
  • will be Virtual Roundtable – General operation of a possible GI system on 20 October at 12 noon to 1pm
  • will be Virtual Roundtable – GIs and Indigenous Knowledge on 22 October at 12 noon to 1pm

Links and more information about these via this page.

So, while:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

we can hardly claim we are not being properly consulted.

  1. We are also not supposed to use “traditional expressions” on our wines. These matters are currently regulated under the Wine Australia Act 2013. There is a rudimentary overview with links to the Register of protected expressions here.  ?
  2. The Consultation Paper defines a “geographical indication” as “a name that identifies a product as originating in a country, region or locality where a particular quality, reputation or other characteristic of the product is essentially attributable to that geographic origin.” The definition in s 4 of the Wine Australia Act is in much the same terms, but limited to “wine goods”.  ?
  3. Although it is headed “Commercial in confidence”, a Google search on “yarra valley fetta” turned up this impassioned defence of “fetta” / “feta” as a common or generic term (but not, I think a plant variety or breed of animal).  ?
  4. I suspect that is Manchego. But it looks like Coles would be safe.  ?

Big Mac sues Big Jack

war / / Trade marks

Two all beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun – it’s a …

As you have no doubt heard, late last month McDonald’s Asia Pacific sued Hungry Jacks following the launch in July of the “Big Jack”.[1]

Michaela Whitbourn at the Channel 9 paper has a clean slide over comparison or you can get messy fingers here (your choice whether you skip the ads or not).

Mr Too Aussie’s video suggests the Big Jack is a special or limited time offer. However, Hungry Jack’s did file for and has obtained registration for “Big Jack” as a trade mark, No 2050899, for hamburgers etc. in classes 29 and 30, way back in November 2019. And Ben Butler at The Guardian reports McDonalds is also seeking revocation of that registration on the grounds the application was made in bad faith.[2]

After news of the court proceeding broke, Hungry Jack’s doubled down:

Someone’s suing Hungry Jack’s. They reckon Aussies are confusing the Big Jack with some American burger. But the Big Jack is clearly bigger ….

Hmmm. Earlier this year, Katzman J, in another case about burgers, explained:

What is the line between inspiration and appropriation? That is the question at the heart of the dispute in the present case.

That case didn’t turn out so well for the emulators.

As you will appreciate, McDonald’s have to get TM No. 2050899 cancelled in light of s 122(1)(e). Presumably, in addition to the “bad faith” allegation, McDonald’s is also asserting s 44 and s 60.

These provisions, like s 120, raise the question whether Big Jack is substantially identical with, or deceptively similar to, Big Mac.

You might think, even on the expanded and controversial test for “substantial identity” declared in Pham Global, the side by side comparison doesn’t work out in McDonald’s favour. Mac and Jack look and sound different and, you might think, convey rather different ideas.

What about deceptive similarity tested on the basis of imperfect recollection?

There couldn’t be too many Australians, especially of the fast food consuming public, who wouldn’t appreciate that Big Jack is gunning for Big Mac. But, is there a real and appreciable risk that a significant number of them would be caused at least to wonder whether there was some association with McDonald’s?[3]

Also, you would have to think, all those ordinary Australians would know you can only get a Big Mac in a McDonald’s outlet.

You would probably have to think they pretty much know Hungry Jack’s is a direct competitor, which makes a point of being critical of McDonald’s.[4]

Similarly, pretty much all those ordinary Australians winding up in a Hungry Jack’s take away could hardly be under any illusions that they were in Big Mac land?

Now, at 50(iii), French J did wholly orthodoxly say:

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

Does being in the shop count? Or is that violating the rule that you compare only the allegedly infringing trade mark to the registered trade mark?

What about billboards and the like? No shop context, probably a Hungry Jack’s logo – maybe not.

Also, you might think that “Big Mac” gets into the Woolworths territory of a household name and there could have lots of fun re-running the fight between Woolworths and Henschke.[5]

What do you think?

Would things be any different if we had an anti-dilution law?

Maybe, at 50c to almost $1 more, the Big Jack will turn out to be a commercial flop and Hungry Jack’s will give up. I guess we’ll have to wait and see.

Lid dip: Jasper Kwok

  1. And, by way of fig leaf, Hungry Jack’s also introduced a “Mega Jack”. NSD967/2020 – First case management hearing before Justice Burley on 2 October.  ?
  2. Shades of “merit” and “nerit”, but note the interesting approach in OHIM rejecting Banksy’s – or those representing him – attempt to “trade mark” one of his, er, graffiti.  ?
  3. See Registrar of Trade Marks v Woolworths at [50] per French J.  ?
  4. Just exactly whose burgers are Hungry Jack’s supposed to be better than?  ?
  5. Most recently addressed in the AMG case at [36] – [42]: The more famous your trade mark, the less likely people will recall it imperfectly.  ?

Yellow tops and labels

war / / Because I felt like it, Trade marks

It’s not exactly front page news, but over at news.com.au they have a short video explaining the battle between Kraft and Bega over who can market peanut butter in that yellow get-up. This follows news that Kraft has applied for special leave to appeal the dismissal of its complaint.

A Current Affair also has a go with a lot more flag waving and some gruesome finger dipping.

If you’re looking for the more formal legal analysis, the Full court decision is here.

So far, the moral of the story is that an unregistered trade mark is not property in its own right. Such a “thing” can be assigned only as part of the transfer of the goodwill of a business as a going concern. If you are going to sell your business, or its assets, but you don’t want to the purchaser to use an unregistered name, or get-up, after the sale, you will need to impose appropriate contractual restraints.

Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65 (special leave application pending)

Productivity Commission Response No 2 – No 2

war / / Designs, Patents, Trade marks

The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 received Royal Assent on 26 February 2020.

The Act as actually passed (with amendments) is available here (to get the text from Austlii when I went there, I had to download the RTF or plain text format). There is also now a Revised Explanatory Memorandum.

As assented to, section 2 now prescribes that the abolition of the innovation patent regime will occur 18 months after Royal Assent — 26 August 2021.

(Remember, this is achieved by specifying an additional ground for “the formalities check” in new s 52(3) – an application for an innovation patent may pass “the formalities check” only if the date of the patent would be before [26 August 2021]. There is presumably a good reason why it doesn’t just say The Commissioner must reject the application for an innovation patent if the date of the patent would be on or after [26 August 2021].)

The Revised Explanatory Memorandum explains that 18 months has been chosen to ensure that persons who have filed a provisional application or a basic application under the PCT are not prejudiced. Such a person has up to 12 months from the filing date to file a complete application in Australia and an additional 6 months has been allowed to allow them enough time to make a decision.

As you will recall both ACIP and the Productivity Commission recommended abolition of the innovation patent. The Revised Explanatory Memorandum explains that the Government has accepted those recommendations because (footnotes omitted):

The policy intention of the IPS was to encourage SMEs to innovate and benefit from their scientific progress. In practice however, the innovation patent system has been found to have limited use by SMEs as 74 per cent of SMEs and private inventors filed once and never again; 83 per cent never received an enforceable right; and 78 per cent let their innovation patent expire early rather than pay the minor cost of the renewal fee. The Productivity Commission found that the majority of SMEs who use the innovation patent system do not obtain value from it, and that the system imposes significant costs on third parties and the broader Australian community. Given this, the innovation patent system has shown to be unlikely to provide net benefits to the Australian community or to the SMEs who are the intended beneficiaries of the system.

Section 4 in the Act as passed also requires the Minister to establish a review of the accessibility of patents for small and medium enterprises within 3 months (i.e. by 26 May 2020). Matters the review should consider include:

(a) the cost of applications for patents; and

(b) processing times of patents; and

(c) advice provided by the Australian Government with respect to the patent application process; and

(d) awareness of the patent application process.

The written report from the review must be submitted to the Minister within 12 months of commencement and the Minister must table it in both Houses of Parliament within 15 sitting days of receiving the report.

In addition to these matters, the Act also:

  • introduces an objects clause into the Patents Act 1990 – Sch 1 Part 1;

The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.

  • revises the Crown use provisions in both the Patents Act and the Designs Act – Sch 2 & 3;
  • amends the compulsory licence provisions for patents to be based on a “public interest” test rather than a failure to meet the reasonable requirements of the public in Australia – Sch 4;
  • provides for electronic seals in the Patents and Trade Marks Offices – Sch 5;
  • permits objection to ‘omnibus claims’ to be raised at opposition, re-examination and revocation stages as well as examination – Sch 6;
  • permits the Commissioner of Patents to redact information (i.e. parts of documents) as well as documents where confidentiality requires it – Sch 7; and
  • amends the circumstances a translation of a patent application originally in a foreign language will require a certificate of verification – Sch 8.

All the amendments commenced on 27 February 2020 except for the abolition of innovation patents and Sch 8. The timing of the abolition of innovation patents has been discussed above. Sch. 9 commences on 26 August 2020.

GIs and proposed EU FTA

war / / Trade, Trade marks

The Australian government has released the list of geographical indications (GIs) the EU is seeking protection for if/when the proposed free trade agreement goes ahead.

According to the announcement, the EU is seeking protection for 236 spirit names and 172 agricultural or other types of name.

The full list can be found via here.

The EU is seeking that included GIs be protected against:

  1. any direct or indirect commercial use of a GI name:
    1. for comparable products, or 
    2. in so far as such use exploits the reputation of the GI, including when that product is used as an ingredient; 
  2. any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated, transcribed, transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar, including when those products are used as an ingredient; 
  3. any other false or misleading indication as to the origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin, including when those products are used as an ingredient; 
  4. any other practice liable to mislead the consumer as to the true origin of the product.

No more mozzarella on top of your pizza, no more prosciutto around your melon balls, no more puy lentils (unless they’re imported from over there)?

If you think the inclusion of a name in the list will harm your interests, you should get your objection in by 13 November 2019.

The government says, however, you should base your objections on at least one of the following grounds:

  • the name is used in Australia as the common name for the relevant good; 
  • the name is used in Australia as the name of a plant variety or an animal breed; 
  • the name is identical to, or likely to cause confusion with, a trade mark or GI that is registered or the subject of a pending application in Australia; 
  • the name is identical to, or likely to cause confusion with, an unregistered trade mark or GI that has acquired rights through use in Australia;  or 
  • the name contains or consists of scandalous matter.

Licensing relief

war / / Trade marks

The Full Court has restored some commercial sanity to trade mark licensing in Australia and ruled that Manassen, the parent company, was an authorised user of the TRIDENT trade marks owned by Trident Foods (the subsidiary). This is an important ruling as it is a common arrangement for a corporate group’s trade marks to be held by an IP “holding company” which is often not the parent of the group.

Trident Seafoods, a large American corporation, has its trade mark:

blocked in Australia by Trident Foods’ TRIDENT registrations. It therefore tried to get Trident Foods’ registrations removed for non-use.

The trial judge found that Trident Foods had not used its trade marks in the relevant period, but exercised her Honour’s discretion against removal. Her Honour found that Trident Foods did not use its trade marks itself; they were used by Manassen, which was Trident Foods’ parent. The trial judge considered that the arrangements did not constitute the exercise of control by Trident Foods over Manassen to qualify as authorised use under section 8. Trident Seafood appealed her Honour’s decision not to order removal. The Full Court held that her Honour had erred and should have found Manassen’s used was authorised use and so the removal action failed because Trident Foods proved use of its trade marks in the relevant period. It also held that there was no error in the exercise of the discretion not to remove the registrations.

There was licensed use

At [44], the Full Court set out the trial judge’s findings that Manassen was not Trident Foods’ authorised user:

I am not satisfied that the evidence identified by Trident Foods shows that Manassen’s use of the “TRIDENT” trade mark has been “under the control of” Trident Foods within the meaning of s 8 for the following reasons:

(1) The corporate relationship between Trident Foods and Manassen does not place Trident Foods in a relationship of control over Manassen; rather, the converse is the case. The commonality of directors does not, without more, permit Trident Foods to exercise control over Manassen.

(2) Ms Swanson’s evidence is in the nature of assertion. It does not include any particular illustration of conduct by Trident Foods amounting to actual control of the use of the “TRIDENT” trade mark.

(3) The fact that Ms Swanson considered it unnecessary to give directions, whether by reason of the existence of the VQM Manual or otherwise, is not relevant to the question of whether Manassen had obligations to Trident Foods in relation to the use of the “TRIDENT” trade mark.

(4) Any control that Ms Swanson might personally exercise by virtue of her membership of the Innovations Council (which was asserted but not demonstrated) does not prove control by Trident Foods.

(5) The identification of Trident Foods as trade mark owner on products supplied by Manassen does not prove use of the trade mark under the control of Trident Foods.

(6) Assuming that the VQM Manual is owned by Trident Foods jointly with other corporate entities in the Bright Group, Trident Seafoods did not demonstrate that the VQM Manual conferred any relevant control on Trident Foods over Manassen.

(7) I am not satisfied on the evidence that there was an unwritten licence agreement in place, notwithstanding the recitals to the 3 November 2017 agreement. The affidavit evidence does not support the accuracy of the recital as to that unwritten agreement.

At [44], the Full Court noted that Lodestar required actual control over the use of the trade mark to qualify as authorised use under section 8. Whether there was actual control was a question of fact and degree. However, control could arise “where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

At [45], the Full Court considered the relevant issue was not which company controlled the other, but whether or not Trident Foods had control over the use of the trade marks by Manassen even though Trident Foods was its wholly owned subsidiary. The Full Court held that there was relevant control. The two companies were acting with “unity of purpose”. Here:

  • the two companies had common directors;
  • as directors of Trident Foods, those directors had obligations to maintain the value of its trade marks (which were valued in its books at $10 million)

    To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.
    So it was “commercially unrealistic” in these circumstances not to infer the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand (emphasis supplied)

  • further, every packet sold by Manassen bore a notice that the trade marks were owned by Trident Foods
  • the corporate relationship, the commonality of directors and the shared processes between the two companies meant it was not surprising there were no particular instances of actual control being exercised over Manassen
  • It was inconceivable that Manassen was using the trade marks without the knowledge, consent and authority of Trident Foods

As a result, the Full Court considered it was not accurate to characterise Trident Foods as merely acquiescing in Manassen’s use of the trade marks rather than controlling that use. At [51]:

Mere acquiescence denotes passive acceptance of Manassen’s use but the corporate relationship, common directorships and arrangements between the companies required active engagement by those directors to protect Trident Foods’ valuable goodwill ($10 million in the books of Trident Foods, PJ [161(1)]). Trident Foods’ active consent and authority must constitute an unwritten licence for use of the marks.

So, Trident Foods demonstrated that it had used its trade marks (through its authorised user, Manassen) during the relevant non-use period.

The discretion not to remove under s 101(3) & (4)

If it had been necessary, the Full Court also rejected Trident Seafoods’ argument that the trial judge should not have exercised her discretion against removal. In reaching that conclusion, the trial judge had properly taken into account the length and extent of Trident Foods’ reputation in the TRIDENT trade marks and the potential for confusion if Trident Seafoods introduced its trade mark into the market place.[1] At [37]: the Full Court explained:

The criticisms of the primary judge are unfounded. The primary judge did identify the relevant context and the evidentiary foundation for her conclusion about confusion. Trident Seafoods’ asserted error constitutes nothing more than a disagreement with the evidence the primary judge considered should be given weight and her characterisation of the relevant context. At PJ [161] the primary judge identified, amongst other things, that the Trident marks have a substantial reputation in Australia having regard to the brand’s “high penetration in Australian households that it is probably in most households at some point during the year”, the fact that there is “not an independent retail channel in Australia that does not carry a ‘TRIDENT’ brand product”, “‘TRIDENT’ branded products are on promotion with independent retailers every month of the year, across the range”, and “‘TRIDENT’ is the number 1 selling brand for sweet chilli sauce, dates and coconut cream”. The primary judge also referred expressly to the competing contentions of Trident Seafoods about the potential for confusion at PJ [159] to [165]. It must be taken from the primary judge’s conclusion at PJ [179], particularly PJ [179(5)] that the primary judge was not persuaded by Trident Seafoods’ submissions about the prospect of confusion. We also do not accept that, in the circumstances identified by the primary judge at [161], there was insufficient evidence for the primary judge to conclude that removal of the marks would create a prospect of confusion in the minds of consumers. The primary judge’s finding at [179(5)] that “confusion is likely to be experienced by consumers who purchase food products at supermarkets because the ‘TRIDENT’ mark is likely to be associated in the minds of those consumers with an array of food products (not necessarily assumed to be limited to, for example, tinned products or tinned products of a particular variety) emanating from a single supplier and available for purchase at supermarkets” is unassailable. The finding was not only open on the evidence but, in our view, was correct. The fact that her Honour did not consider the TRIDENT brand had any residual reputation in respect of fish is not inconsistent with and does not undermine this conclusion.

The Full Court also rejected Trident Seafoods’ arguments that the trial judge had erred in treating mussels, oysters and oyster sauce as falling within “fish” and “fish products”. Trident Seafoods based its arguments on dictionary definitions of these terms. However, a “fair reading of the Nice Classifications discloses that molluscs and crustacean were treated as within the meaning of “fish” and other dictionary definitions also included molluscs and crustaceans within the meaning of ”fish”.

Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ)

  1. Trident Seafoods currently markets its products in Australia under the trade mark “Bountiful”.  ?

check your e-filing receipts carefully

war / / Trade marks

Now that IP Australia has essentially moved to electronic lodgement, a recent case shows that you need to check your e-receipts carefully. The decision may also prove useful to understanding the Registrar’s obligation to give a party an opportunity to be heard.[1]

Facts

Foxtel instructed their lawyers to file a notice of intention to oppose a trade mark filed by Unicom. Foxtel’s instructions were to file on the last day available to oppose. The notice was prepared and on the last day for filing a legal secretary submitted it through eServices. A transaction receipt was received by return.

Ten days later the in-house lawyer at Foxtel rang up the lawyers, alerting them to the fact that Unicom’s trade mark was now registered. Checking the Register revealed that no notice of intention to oppose had been received. The legal secretary:

then checked her files and the transaction receipt. As it turned out, the receipt was not for the lodgement of the notice of intention but concerned a different transaction altogether. Subsequent review of the electronic log provided by IP Australia indicates that although the process for filing the notice of intention had been commenced, the payment had not been received and lodgement had timed out before the filing was complete.

The lawyers then promptly wrote to the Registrar requesting that the registration of Unicom’s trade mark be revoked under s 84A and s 84B, providing an explanation and subsequently filed the proposed Statement of Grounds and Particulars of Opposition (if the registration were revoked).

The Registrar then wrote to Unicom’s attorneys indicating that, having regard to Foxtel’s intention to oppose and the explanation why that had not been effected, her she intended to revoke the registration, but giving Unicom an opportunity to be heard.

Unicom replied; arguing that something is not regarded as filed under the eServices system until and unless a filing receipt is issued. It also contended that the proposed revocation was outside the power conferred by s84A. After considering the submissions, the Registrar decided not to revoke the registration.

Foxtel, through its lawyers, then obtained a copy of Unicom’s submissions through s 217A and made an application for judicial review under s 5 of the ADJR Act and/or s 39B of the Judiciary Act.

Decision

Burley J has dismissed Foxtel’s application.

Foxtel’s first argument was that it had been denied procedural fairness because it was not provided with an opportunity to respond to Unicom’s submissions before the Registrar changed her mind and decided not to revoke the registration.

The Registrar denied that it owed Foxtel any duty of procedural fairness. She was under no obligation to make a decision under s 84A and, in any event, the terms of s 84A required her to give an opportunity to be heard only to the registrant and people with interests recorded under Part XI.

At [40], Burley J held the Registrar did owe Foxtel a duty of procedural fairness, but the failure to provide it with Unicom’s submissions was not a material breach of that duty.

A duty to provide procedural fairness arises whenever the exercise of a statutory power affected a person’s rights, interests or legitimate expectations unless the duty has been excluded by plain words or necessary intendment.

The public interest in the purity of the Register – that the Register should not be clogged with invalid trade marks – meant Foxtel had a sufficient interest that required it be accorded procedural fairness. At [49], Burley J explained:

…. The “interest” of Foxtel is in persuading the Registrar that, in all the circumstances that existed when the trade mark was registered, the trade mark should not have been because, but for the error in filing the notice of intention to oppose there would have been an opposition on foot at the time of registration (s 84A(1)). In my view this is a form of possible adverse affectation that is sufficient to qualify as an interest to attract the protection of the rules of procedural fairness.

That s 84A did specify some people whom had to be given an opportunity to be heard did not lead an implication that Foxtel was not owed a duty. An intention to exclude natural justice was not to be inferred from the presence in the Act of rights which “are commensurate with some [only] of the rules of natural justice”.[2] While not obliged to make a decision under s 84A, the Registrar was obliged to accord Foxtel natural justice having embarked on the exercise.

While Burley J accepted Foxtel’s argument that it was owed a duty of procedural fairness, his Honour did not accept it had been denied natural justice.

Foxtel argued that, as the Registrar indicated to Unicom she would revoke the registration if Unicom did not respond, Unicom’s submissions must have been material to the Registrar’s change of mind – deciding not to revoke. Therefore, Foxtel argued that the failure to disclose Unicom’s submissions before the Registrar decided not to revoke the registration denied it natural justice.

Burley J examined the reasons the Registrar gave for deciding not to revoke; these had been outlined only in short form in the letter advising her decision. From that letter, his Honour found that the Registrar had in fact rejected Unicom’s arguments on the construction of s 84A and accepted Foxtel’s construction. Therefore, Foxtel had not been denied natural justice on the point.

Burley J was not prepared to accept Foxtel’s argument that the short form letter did not set out the real reasons for the decision, especially in circumstances where Foxtel had not sought a statement of reasons from the Registrar under ADJR Act s 13.

Burley J next rejected Foxtel’s argument that the Registrar’s decision was an improper exercise of power because it was so unreasonable that no reasonable person could have exercised the power that way.

Here, Foxtel’s conscious decision to instruct that the notice of intention to oppose be filed on the last day of the opposition period – not an uncommon practice – loomed large.

Burley J accepted that the scheme of the Act reflected an intention that the Register be pure. His Honour noted, however, that the Act and reg.s also provided for deadlines for filing documents in oppositions and, in addition, provided a further opportunity for objectors to seek rectification through s 88. His Honour also pointed out that the Explanatory Memorandum linked s 84A(6) – which explicitly states the Registrar has no duty to consider whether to revoke a registration under s 84A – to the objectives of the section:

…. Revocation of registration under section 84A is not intended to provide a way of settling competing claims to ownership of a trade mark. This can be pursued through the courts, with section 86 of the Trade Marks Act providing for the Federal Court to cancel a registered trade mark. Nor is it intended to be a mechanism for parties to file de facto oppositions after a trade mark has been registered. This provision is only intended to provide an administrative mechanism to undo a registration where it was wrongly registered.

The Registrar’s letter stated that she had considered “all of the circumstances” and so taken into account all mandatory considerations. Further, as already noted, the procedure was not intended to provide a mechanism “for parties to file de facto oppositions after a trade mark has been registered” and Foxtel could still seek rectification under s 88. In these circumstances, Burley J held the Registrar’s decision was not so unreasonable that no reasonable person would have exercised the power that way.

Rather than take up the invitation to seek rectification under s 88, Foxtel has appealed (NSD795/2019).

Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605 (Burley J)

  1. Reg. 21.15 applies where the Act or the reg.s “provide for a person to be heard”.  ?
  2. Citing Annetts v McCann [1990] HCA 57; 170 CLR 596 at [2].  ?

Repeal of s 51(3)

war / / Antitrust, Copyright, Designs, Enforcement, IP generally, Patents, Trade marks, Trade Practices

The bill repealing (amongst other things) s 51(3) of the Competition and Consumer Act did get passed and has received royal assent.

The repeal takes effect on 13 September 2019.

So, if you thought you were relying on s 51(3)’s protection, you have a bit less than 6 months to get your house in order.

Your licences and assignments of IP rights probably will not get you into trouble for the most part unless you have market power. But that is not exactly a hard and fast rule so you should discuss your arrangements with your lawyers ASAP.

As discussed in this post, one area of potentially significant concern is where the IP holder has its own retail outlets and also licenses other retail outlets – e.g. not uncommon for franchisors who have their own outlets and franchisees. There is a concern that may give rise to criminal cartel conduct.

If you want to know about the prohibitions on cartel conduct, Ian Wylie has published a paper “Cartel conduct or Permissible Joint Venture?“

On Tuesday, the ACCC also announced it hopes to publish draft guidelines by “mid-2019” and finalise them before 13 September. Amongst other things, these proposed guidelines will outline:

how the ACCC proposes to investigate and enforce Part IV in relation to conduct involving intellectual property rights. They will also provide hypothetical examples to illustrate conduct that the ACCC considers is likely or unlikely to contravene Part IV.