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Most music lovers, and indeed
anyone else with their finger on the pulse of pop culture would be
aware of Dr. Dre - not just
within the context of his music, but perhaps more notably over the
past decade for his market dominating headphones, 'BEATS
By Dr. Dre'.
Since 2009, 'BEATS by Dr. Dre'
headphones have been available to the Australian market both online
and via retail outlets. The business was established only 1
year prior, in 2008, in the USA. In September 2012,
'BEATS' branded audio speakers also became available in
Australia.
On 14 May 2014, Strategies Unleashed
Pty Limited (an Australian entity unrelated to Dr. Dre's
entity 'Beats Electronics LLC') applied to the Australian Trade
Marks Office to register the word mark 'ATOMIC
BEATS', in respect of audio speaker goods.
Beats Electronics LLC opposed the
registration of the word mark, 'ATOMIC BEATS', claiming,
amongst other grounds that were not necessary to determine in the
proceedings, that it already had similar trade marks that had
acquired reputation in Australia and registration of the word mark
'ATOMIC BEATS' would likely
deceive or cause confusion amongst consumers (
section 60 opposition).
The opposition available in
section 60 of the
Trade Marks Act 1995 has 2 major elements that must be
satisfied for the opposition to succeed:
the opponent to registration
must demonstrate the existence of a reputation in a trade mark
before the priority date (which within the context of the
'BEATS By Dr. Dre' case' (
Beats Electronics LLC v Strategies Unleashed Pty Ltd [2017] ATMO
6 was 14 May 2014, the date that Strategies Unleashed Pty
Limited had applied to register its trade mark).
As stated by the Australian Trade Marks Office Hearing Officer in
his decision, the level of that reputation must be such that a
'significant' or 'substantial' number of consumers
within the market would have an awareness of the trade mark.
The assessment of what is 'significant or
substantial' must be properly and sensibly applied, and may
depend on the specialised nature of the relevant market;
and
the nature and extent of the
demonstrated reputation must be such that the use of the trade mark
under opposition, if registered, would be likely to
deceive or cause confusion. This consideration is
conjectural, and does not require actual instances of deception or
confusion to be demonstrated, but where such instances have been
provided, they will be given great weight.
Beats Electronics LLC did not
provide evidence of sales or advertising figures for 'BEATS by
Dr. Dre' products in Australia to demonstrate its existing
reputation, which the Hearing Officer commented was a notable
omission, but not fatal to the opposition.
The Hearing Officer accepted that
for the purposes of establishing reputation under section 60 of the
Act, whilst advertisements from TV, radio, magazines or newspapers
may be shown, in our current age of social media, promotional and
advertorial campaigns implemented via social media channels are
equally valid. In line with this, the number of 'likes'
on Facebook and 'followers' on
Twitter, for example, may be taken into
consideration.
A condition was placed on the
acceptance of this type of evidence, however, being that if such
evidence from social media channels is global in nature (as is
often the case), an opponent in trade mark registration
proceedings must specifically demonstrate how the evidence
translates into an awareness or cognisance amongst Australian
consumers.
In accepting Beats Electronics
LLC's opposition under
section 60 of the Act, and therefore refusing Strategies
Unleashed Pty Limited's application to register 'ATOMIC
BEATS', the Hearing Officer acknowledged that determining the
general awareness amongst Australian consumers from worldwide
social media figures may be a difficult task, however, the
substantial size of the figures is indicative of reputation and
cannot be overlooked.
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.
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Trade mark may proceed to registration albeit with a disclaimer recorded against it.
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