Australia: How a social media presence can help protect the intellectual property rights of a company

Last Updated: 1 February 2019
Article by Emma Macfarlane and Catherine Sedgley

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:

  1. 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

  2. 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.  

    (See: Grounds for opposition to registration of national trade marks section 4.5)

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 decision in the case of Beats Electronics LLC v Strategies Unleashed Pty Ltd [2017] ATMO 6 is an example of how social media can be used to promote and protect a brand, and should be noted as a reminder to include social media activity as evidence in any intellectual property dispute, where relevant.

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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Emma Macfarlane
Catherine Sedgley
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