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
Not using (but keeping) Pioneer Read More »
This round of the litigation raise the question ‘Who is a person aggrieved for the purposes of seeking revocation of a registered trade mark?’
Health World isn’t, at least when it comes to Shin Sun’s registration.
Health World uses and has registrations for INNER HEALTH PLUS in respect of probiotic capsules and has a registration for ‘Pharmaceutical preparations; dietetic substances adapted for medical use; products in this class sold by pharmacies and/or health food shops including vitamins, minerals, health foods, dietary foods, Chinese and ayurvedic herbs, and nutrition bars included in class 5’.
Shin Sun uses HealthPlus for products derived from bees, their wax and/or squalene (something to do with sharks) and its Australian trade mark registration is for ‘‘pharmaceutical products including vitamins and dietary supplements’ in class 5′. Shin Sun’s registration had 4 years’ priority over Health World’s.
Health World’s opposition to Shin Sun’s application having failed, it sought revocation on the basis of prior reputation (s 60 or via s 42(b)). This failed because, while anyone could oppose on the grounds of s 60 relying on anyone’s reputation, s 88 required an applicant for revocation to be an aggrieved person and this, in turn, required that the misleading and deceptive nature of the mark sought to be revoked must affect the application for revocation in a meaningful way – the legal or practical effect test from Ritz.
Health World failed this test because its established reputation was in a rather discrete field and there was no risk of overlap with Shin Sun’s own particular, narrow field.
Health World tried a number of arguments to avoid this conclusion, particularly based on the litigious history of the parties including Shin Sun’s own oppositions and other objections to Health World’s trade mark registration. These failed, largely because Shin Sun had withdrawn the objections by the time Health World launched its revocation proceeding or Shin Sun’s actions could be characterised as defensive manoeuvres in response to Health World’s attacks.
I’m not sure what the policy objective being served here is – as the Court notes, the requirement for standing is intended to keep out mere busybodies and officious bystanders. I guess, if there is no overlap in the respective parties’ business fields, the conclusion must follow.
As an aside, the Full Court appeared to endorse the trial judge’s finding that Shin Sun’s registration was vulnerable on the grounds that it was confusing – because the goods Shin Sun’s trade mark was used on were not Shin Sun’s but some related entities (see [18]). I’m not at all clear why that’s the case, but it seems very bizarre that a ‘confusing’ trade mark can happily be left on the Register?
Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 (Perram J with Emmett and Besanko JJ agreeing)
Health World v Shin Sun – round 563? Read More »
Tech IP is hosting 2 seminars in both Melbourne and Sydney: one on each of the above topics.
Speakers include:
Dr Stephen Barker (from IP Australia) and Ben Fitzpatrick on patents
Michael Arblaster and Siobhan Ryan on trade marks.
Dates: 10/12 March for patents and 17/19 March for trade marks.
Fee = $528 (although I’m not sure if that is per seminar).
Details here.
Patent and Trade Mark oppositions Read More »
The Government has published Frontier Economics’ review of the ambush marketing legislation provided by the Olympic Insignia Protection Act 1987 (Cth) and the Melbourne 2006 Commonwealth Games (Indicia and Images) Protection Act 2005 (Cth) (the AML).
According to the Executive Summary, key points include:
While the review found the legislation largely working as intended, it did not some qualifications:
(1) whether apparent reductions in ambush marketing are due to factors outside the AML;
(2) whether NSOs and other peak bodies have been unduly hampered in their ability to attract their own sponsorships; and
(3) whether sufficient income generated from the rights granted under the AML has been returned to sport.
Read the report here (pdf).
Ambush Marketing DownUnder Read More »
An Austrian company, Maselli, sells clothing under its brand WELLNESS. It has the trade mark registered for clothing in class 25 and also in classes 16 (for printed matter) and class 32 (for alcohol free drinks). It gave away bottles of a non-alcoholic drink bearing the WELLNESS brand, but never sold the drinks independently of the clothing.
On application by Silberquelle, a producer of alcohol free drinks, the ECJ has ruled that affixing the mark to goods, which are given away free of charge to purchasers of other goods, is not genuine use of the trade mark for the free goods in the EU.
That is, it should follow that Maselli’s mark will be revoked.
Here, of course, there has to be use as a trade mark and the use (as a trade mark) has to be in good faith see s. 92 and Gallo v Lion Nathan
As the IPKat asks, what happens to a newspaper’s trade mark where the newspaper is given away free?
Ever since the old Irish case about “Golden Pages” TM, where a classified directory was given away for free, but contained paid advertising, we have thought the trade mark was being used in the course of trade (or in more modern parlance, in good faith as a trade mark). Wonder if that’s still the case?
C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH
Not using a trade mark Read More »
IPKat reports that the Singapore Treaty on the Law of Trademarks came into force on 16 December 2008, when Australia became the 10th party to ratify.
Apparently, it should help simplify trade mark applications and licensing.
Wonder if there’s anything in here to do with this?
Singapore Trademark (?) Treaty Read More »
The applicant had registered BING! for
Class 9 Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector; Class 35 Distribution and sales of computer software.
Class 42 Design of computer software; programming maintenance, upgrading and updating of computer software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector…
The respondent provided an internet postal service. To enable subscribers to use the service, it supplied them with software to be downloaded and installed on the subscribers’ own computers.
• The first respondent’s promotional material uses the trade mark “bing” in relation to its software, and through installation and use of the software, the trade mark “bing” appears on the computer screen in various guises. It is clear from the respondents’ own evidence that the first respondent uses the mark “bing” in relation to at least software (class 9); distribution of computer software (class 35), and updating of computer software (class 42).
• The software distributed by the first respondent has a number of components including “bing Client”, “bing Virtual Printer Driver”, “Popup bing Mailroom”, “Control bing Printer”, and “bing Help”.
• Customers of the first respondent enter a software license agreement in respect of the software (and updates) provided to the customer by the first respondent under the name “bing”. Further, the software licence agreements refer frequently therein to “bing”.
Collier J rejected the argument that “bing” in its various guises was substantially identical to BING!, but found deceptive similarity. Of potentially greater significance, her Honour went on to find that the respondent was using the “bing” mark in relation to goods and services covered by the applicant’s trade mark registration:
First:
52 …. I agree with the respondents that the first respondent is engaged in the provision of internet postal services, which prima facie are not goods or services in respect of which the applicant’s trade mark is registered. However I consider it is also clear that, as Mr Franklin submitted, the first respondent’s service is, in the manner in which it is conducted with the majority of its clients, a software-enabled service. While customers can access the first respondent’s service without specific software (an issue to which I will return later in the judgment), the first respondent provides software, bearing the trade mark “bing”, to customers to allow the customers to effect the internet postal service it provides, and to access that service.
Then, MID Sydney was distinguished:
57 So far as concerns the software provided by the first respondent to its customers bearing the moniker “bing”, in my view that software is a “good” which is both severable from the internet postal service, and would in other circumstances be capable of being the subject of a registered trade mark in its own right within Class 9. Similarly, distributing and updating that software are “services” within classes 35 and 42. The software supplied by the first respondent, and the services provided by the first respondent in support thereof, are not, to draw an analogy with MID Sydney 90 FCR 236, goods or services which lose their features as software because they form part of an overall broader service. The software remains software, which requires distribution and updating, no matter that it is used in connection with the first respondent’s internet postal service.
as was the SAP case relied on by the respondent
61 Where the analogy between these proceedings and SAP Australia 169 ALR 1 breaks down is that while the Full Court accepted in SAP Australia that “broadly based consulting services” could include supplementary training as an adjunct to the provision of custom designed computer systems for clients, in this case it does not follow that software provided by the first respondent is no more than an incident to the provision of its service. As I noted earlier, the software used by the first respondent is a product in its own right – the copyright therein is owned by a third party, and the first respondent has exclusive distribution rights (TS 66 ll 12-13). The first respondent provides the software even though, as Mr Cranitch conceded during cross-examination, the first respondent has some clients who do not use the software, but send to the first respondent documents in the form of PDF files, word documents and publisher documents (TS 71 ll 40-41). The software and associated services are an important part of the first respondent’s internet postal service.
62 In ascertaining whether software is “incidental” to its internet postal service as submitted by the first respondent, it is useful to test the first respondent’s hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was “incidental” to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54).
63 Software is pervasive in twenty-first century Australia. In the words of one writer:
In case you have not noticed, software is now a key part of our social structure — we sense it in our cars, in our supermarkets, in our televisions, in our computers — we sense it everywhere; it is a ubiquitous, undulating, architectural, air like, water like commodity that infiltrates our daily lives. (Brian Fitzgerald, “Software as discourse?: A constitutionalism for information society (1999) AltLJ 25)
64 However its omnipresence does not, in itself, mean that it fulfils an incidental role in relation to functionalities such as the service provided by the first respondent. Further, the fact that the software used by the first respondent is not sold by the first respondent, or indeed that it has no operation other than in relation to the first respondent’s service, does not mean that it is not “software” for the purposes of classes 9, 35 and 42 for which the applicant has a statutory monopoly.
Collier J then found Mr Crainitch, the managing director, CEO and company secretary of the first respondent, liable for authorising, directing or procuring the corporate respondent’s infringements. Her Honour dismissed the allegations of contraventions of s 52 and 53 of the Trade Practices Act and passing off.
An application to re-open the case after judgment was reserved was dismissed here and the final form of relief granted is here. It would appear that the respondents could continue the postal service under the name “bing” if they can come up with a new name for their software.
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760
Prof. Mark Davison reminded me that her Honour refused to award damages and points out a possible defence that the respondents might have explored here.
bing infringed BING! Read More »
The European Court of Justice has ruled that a non-profit association – in this case a body devoted to the preservation of military traditions which performs charitable works and collects gifts – does in fact use its “trade” marks in (what we would call) the course of trade:
Case C?442/07, Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’
IPkat’s summary here.
Trade mark use by non-profits Read More »
The Full Court has allowed Hansen’s appeal from the dismissal of its trade practices/passing off action against Bickford’s Monster Energy drinks.
Before the trial judge, it was conceded that Bickford’s get up would be confusingly similar to Hansen’s, but the trial judge found that Hansen did not have sufficient reputation with the public in Australia to found its claim.
Hansen had never traded here nor sold its energy drinks here. However, there was evidence that it had “indirectly” promoted its brand name and get up here through activities such as sponsorships of sporting events and logos on clothing.
The Full Court reported the trial judge as finding that Hansen could not succeed unless it established a relevant reputation within its target market in Australia – males between the ages of 18 to 30. His Honour went on to find the evidence was insufficient to support such a finding. The indirect advertising was too fleeting and occasional to establish a reputation within the target youth market in Australia “other than perhaps some extreme sports enthusiasts”.
The Full Court allowed the appeal on the grounds that the “target market” was not the relevant section of the public to test Hansen’s reputation. It was necessary only for Hansen to show that it had a reputation in Australia with any relevant section of the public.
Tamberlin J (with whom Siopis J agreed) held:
[46] … In our view, the language of the section and its purpose do not require the Court to select any particular group as targeted by advertisers when assessing whether a breach has occurred. The fact that certain pieces or strategies of advertising may target a particular class of people as potential customers of the relevant product does not justify the conclusion that a significant number of persons in that class must be shown to be aware of the reputation before a claim under s 52 is made out. The question which must be answered can properly be framed as being whether a not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled. (emphasis supplied)
Finkelstein J agreed in the result, but disagreed about the need for a reputation amongst more than an insignificant number of persons. While his Honour accepted that passing off required the establishment of a reputation amongst a significant or substantial number of the Australian public, there was no warrant to import that requirement into an action for contravention of the Trade Practices Act.
Siopis J, as noted, agreed with Tamberlin J indicating also (?) that the earlier decisions requiring a not insignificant number were not “plainly wrong”.
The significance of the High Court’s reference in [103] of Campomar v Nike to isolating a representative of the class as the hypothetical individual to test “representations to the public”, therefore, bearing in mind the references in [102] to “ordinary” or “reasonable” members of that class, remains to be tested in some future High Court case.
As the trial judge did not explicitly find that Hansen did in fact have a reputation amongst Australian extreme sports enthusiasts, matter was remitted to him for further hearing.
Importantly for the future, Finkelstein J accepted that indirect marketing activities could be sufficient to establish the foundation for a s 52 claim:
63 There are a plethora of examples of indirect advertising and it is a key topic of discussion in advertising literature. Indirect advertising of the kind with which everyone is familiar is the sponsorship of sports. Many people in many countries place great value upon entertainment, competition and accomplishment, all of which are seen in the sporting arena. Brand names and logos appear around sporting arenas, on the clothing worn by sportsmen and women and on the equipment sportsmen and women use. This form of advertising is seen by many thousands of fans who attend sporting events and, in the case of popular sports, by hundreds of thousands of people if the event is broadcast on television. There are numerous studies that show that this type of indirect advertisement is far more effective at eliciting a consumer recall response than a direct television commercial.
64 In my opinion the judge was entitled to infer that the indirect brand advertising employed by Hansen (and, for that matter, Bickfords) can establish reputation as well as, if not better than, direct advertising. After all, everyone knows that James Bond drives an Aston Martin, Janis Joplin wanted to own a Mercedes Benz and Audrey Hepburn had breakfast at Tiffany’s.
Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181
How much reputation is enough? Read More »
The European Court of Justice has handed down an important ruling clarifying aspects of trade mark dilution in the EU: Intel v CPM:
IPkat’s comments here.
Links to some other commentary here and the “Rapid Response” seminar power point slides via here.
Art.4(4) of the Trade Marks Directive provides:
4. Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
(a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;
which is similar to our very own s 120(3), so there might be some scope for understanding how s 120(3) could work?
Meanwhile, IP Dragon draws our attention to issues relating to protecting well-known trade marks in China here.
Trade mark dilution or well known trade marks Read More »
