Australia: Courting publicity? Trade mark disputes in the news

Commercial Law Update
Last Updated: 13 May 2012
Article by Catherine Logan

This article was first published in the Lexis Nexis Australian Intellectual Property Law Bulletin April 2012 Volume 24 No 9.

Of four Australian trade mark disputes that generated headlines last year, one was from the world of sport, one from retail (hardware), one from fashion and one from swimwear. All obtained free publicity for their new ventures or established brands. This article provides an overview of each dispute.

"Bombers in the line of Ire"1

The Brisbane Bombers are in the race to secure a place as the 17th NRL club, if the NRL competition expands in 2013. There are other contenders as well, such as the other Queensland bid known as the "Western Corridor". In launching their brand on 14 July the Brisbane Bombers courted immediate controversy with the AFL's Essendon Bombers, a club with a 130 year history, objecting in the press to the use of their nickname, despite there being ample precedent for this.

"Bulldogs", "Kangaroos", "Blues" and "Tigers" are all examples of similar cross over nicknames between the Australian football codes.

However, in drafting their class descriptions, the applicant, Brisbane Bombers Rugby League Football Club Pty Ltd, has been very careful, at least in connection with its application for the word mark "Brisbane Bombers", to follow the model of turf sharing that has been developed between the NRL and AFL over the years to avoid trade mark conflicts between their respective marks.

The applicant has restricted its claims to goods "promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league". 2 This suggests that early chest beating by Essendon management and the AFL was just that.

In the meantime, the Brisbane Bombers have promoted their name very effectively, and are still using it in their ongoing bid. However, at the time of writing their trade mark applications were still subject to adverse reports.

"Mitre 10 sees red over Masters but rollout continues" 3

Leaving aside the use of nicknames, fights over certain colour schemes have also had their fair share of attention.

Mitre 10 failed last year in the Victorian Supreme Court to get an injunction to prevent Woolworths from rolling out its Masters hardware stores, clearing the way for the first of a planned 150 mega stores which opened in Braybrook (in Melbourne's north western suburbs) on 1 September. 4

Mitre 10 argued that the Master's colour scheme was too similar to its own blue grey and white scheme and could confuse customers. Woolworths of course are old hands at this type of thing, having prevailed over BP over their use of the colour green at its petrol stations several years ago.

Cameron Macauley J disagreed with Mitre 10's argument that consumers would be confused by the similar colour scheme and think they were walking into a Mitre 10 store, or that the two businesses were somehow associated.

Masters Home Improvement is the 500 pound gorilla here, but has succeeded in garnering publicity for this new brand and looking like a victorious victim at the same time. It has since gone on to open a slew of new stores.

The Woolworths-related company Master's Home Improvement Australia Pty Ltd applied for registration of the current Masters trade mark (see image above) for this business, in two separate applications on 3 June 2011. 5 At the time of writing, each of these were subject to an adverse report from the examiner. Applications for two other composite marks 6 filed on 29 October 2009, have since lapsed following initial adverse reports.

"Mambo v Mabo: What's in a name?" 7

An application for the above composite mark was filed on 30 June 2010 8 by Mahalingham Joseph Mabo, a Palm Island artist, and accepted for registration on 3 October 2010. Mambo then filed a notice of opposition on the basis that the word "Mabo" used in the mark was deceptively similar to the word "Mambo", particularly since the application included claims for beachwear and surfwear.

The opposition has since been withdrawn, but the claims under the Mabo mark still include beachwear and surfwear.

In the meantime the new Mabo brand got some publicity (and sympathy, if the reader's comments are anything to go by) when this opposition was first reported.

One notable comment on this article warned Mabo to think twice about using the brand, not because it would deceive anyone, but because people would think it was "a Mambo rip off from China, bought in Thailand" .9

It looks like the Mabo mark pictured, featuring a feathered headdress around a shark's jaw, will be able to be used to brand designs by indigenous artists on Palm Island into the future, with the trade mark since having been entered on the register on 9 December 2011, effective from 30 June 2010.

"Speedo in fight with 'bisexual blogger'" 10

Still in the area of clothing, on 21 September 2011 the Sydney Morning Herald reported that Flick J of the Federal Court in Sydney granted an application by SPEEDO Holdings BV and SPEEDO International Ltd deeming that Dave Evans, the "aussiespeedoguy" and selfdescribed "bisexual blogger", had been effectively served with court documents by email.

Speedo has been trying to disassociate itself from salacious websites operated by Mr Evans who owned several domain names that included the word "speedo", 11 and went on to obtain wide ranging orders against Mr Evans on 3 November last year in proceedings in which Mr Evans did not appear, either himself or by a legal representative, or file a defence.

Speedo sought orders, amongst other things, that Evans transfer all such domain names to it and be restrained from registering any such names in the future. The orders were sought and obtained on the grounds of misleading and deceptive conduct and trade mark infringement.

However, Mr Evans' site, which now appears to operate at a domain name called and contains, amongst other things, x-rated images of people wearing speedos, unfortunately tops the list of search results when the search for "speedo and gay" is performed and the headline of the search result pointing to that website is still "Aussie Speedo Guy"!

In other words, Speedo has been able to stop Mr Evans from using its trade mark as part of his domain names but not from describing himself as the "Aussie Speedo Guy" and featuring people wearing Speedos in the pictures on his blog.

To make matters worse Mr Evans appears to be merely one of many, if the Google search results of the search "speedo and gay" is anything to go by! At least Evans' site no longer comes up in the "speedo" search hits list as it was before the action was brought.


1 Headline of Herald Sun article authored by Chris de Kretser and Daryl Timms, 1 August 2011..
2 See trade mark application nos 1435067 (composite mark) and 1435068 (word mark).
3 Headline of Smart Company article dated 29 July 2011 by Madeleine Heffernan.
4 Mitre 10 Australia Pty Ltd v Masters Home Improvement Australia Pty Ltd [2011] VSC 343; BC201105472.

5 See trade mark application nos 1428775 and 1428974.
6 See trade mark application nos 1328809 and 1329024.
7 Headline of Brisbane Times article 28 July 2011 by Dan Nancarrow.
8 See trade mark application no 1369692.
9 See in-a-name-201107.
10 Headline of Sydney Morning Herald article 22 September 2011 by Leonie Lamont.
11 For example and www.aussiespeedo

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Catherine Logan
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.