Introduction

A registered trade mark is a powerful tool against brand dilution. Typically a registered trade mark provides its owner with protection against other businesses using or registering a mark which is "substantially identical" or "deceptively similar" to the registered trade mark, provided it is for the same or similar goods and services.

Three recent cases involving Hugo Boss, Botox and Twitter, remind us that the ability for owners of well known marks to protect their brand extends well beyond the usual tests.

Where a trade mark owner can establish that its mark has acquired reputation in Australia such that the use of another mark would be likely to deceive consumers or cause confusion, the trade mark owner can prevent registration of the mark. This is the case even if the second mark is not "substantially identical" or "deceptively similar" to the first mark, and even where the marks are used in relation to goods or services which are not closely related.

Hugo Boss case

Hugo Boss successfully opposed the registration of the mark "Bosspabini" in relation to clothing. The applicant for the "Bosspabini" mark was seeking registration in relation to clothing. The Trade Marks Office (TMO) found that the earlier registered "Boss" and "Hugo Boss" trade marks had acquired such a reputation in Australia that "a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection" between the marks. The TMO therefore accepted that the registration of the "Bosspabini" mark may lead to consumer confusion based on the success of the earlier "Hugo Boss" marks.

This is particularly the case in the modern world of brands having "diffusion" lines and consumers being used to there being a variety of sub-brands from the primary brand.

Botox case

An applicant attempted to register a trade mark for "No-tox" in relation to facial care products. The owner of the well known "Botox" trade mark, Allergan, opposed registration. The TMO rejected the opposition, and Allergan appealed to the Federal Court.

In upholding the appeal and rejecting registration of the "No-tox" mark, the Federal Court accepted that Allergen had demonstrated that "Botox" had acquired such a reputation that the use of the mark "No-tox" would be likely to deceive or cause confusion amongst consumers. The court considered there was a real and tangible danger that consumers might view "Botox" and "No-tox" as complementary products in the same way as the Coke and Diet Coke brands.

Twitter case

Twitter successfully appealed to the Federal Court to prevent registration of "Twitter Real Estate" in relation to real estate advisory services. The point of interest is that the application for "Twitter Real Estate" was not related to the same services as those of the existing registered trade marks for "Twitter", which were for instant messaging and related services.

Twitter was able to show that given its reputation in the "Twitter" trade mark, consumers would experience a reasonable doubt as to the existence of some sort of connection between the mark "Twitter" and "Twitter Real Estate". This is likely to be particularly the case where the only distinctive element of the second mark is the word "Twitter".

Proving reputation

In order to establish substantial reputation, trade mark owners need to rely on information such as high volumes of sales, extensive advertising and promotion. Survey evidence can also be used to establish consumer recognition of a brand.

Conclusion

These recent cases demonstrate the importance of selecting a strong mark which does not bear resemblance to well known trade marks, regardless of whether you operate in the same industries.

The cases also highlight the value of having a highly recognised brand which gives its owner additional means of protection to safeguard its reputation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.