To brainstorm, select, design or register a trade mark
there's a lot to be said for working at the outset with a
multi-disciplinary team capable of thinking in design, marketing
and legal terms. Recent Australian trade mark law
decisions lay bare the success or failure of companies to build
brands and trade mark rights. The evidence is there for improved
performance by brand managers, product developers, store
façade designers and others whose livelihood depends on the
protection of intellectual property, in particular trade marks. 1. Consider registering a colour or shape trade
mark There has been a recent burst of colour onto the Australian
Trade Marks Register. Trade mark applications for such colours as
BP's green and Cadbury's purple have attracted commentary
and oppositions against their acceptance for registration. In October 2004, BP won in the Federal Court of Australia
against Woolworths which opposed BP's trade mark application
no. 559837 to register its shade of green (Pantone 348C) for its
service stations. In its objection Woolworths noted it too uses
green in branding for its service stations (eg for Woolworths
Petrol Plus). In 2005, litigation continues for purple by Cadbury Schweppes
(pending marks 779336, 1009024, 1029792 and 1029890). The
oppositions to the application by Nestle and Darrell Lea Chocolate
Shop Pty Ltd are yet to reach a hearing. In December 2004,
Cadbury's "tactical counter-claim" for a range of
trade practices and passing off offences against Darrel Lea was
discontinued. Trade mark registration of colours has grown. The door opened
wide to the possibility with section 70 and the then new definition
of "sign" in the Trade Mark Act 1995. Now there are over 150 registered colour marks on the Australian
Trade Marks Register as of February 2005. Examples are: Further, there are over 150 colour trade mark applications on
the Australian Trade Marks Register. They include applications for
Nestle's Milo green (888415) and for two telecommunications
companies - Telstra's blue and orange (983458) and Orange's
orange (1028765). Shape as a trade mark
registration There has also been a multitude of shape registrations. As at
February 2005, the Australian trade mark register shows whilst
there are 370 shape marks registered, a further 270 are pending
registration. The Academy Awards statue, Tiny Teddies biscuits and
Rubix Cubes are among the shapes awaiting registration. In foreign jurisdictions shape trade mark applications have also
increased in number. For example, in the European Union (EU) applications for the
Maglite flashlight shape1 failed in November 2004; and
succeeded last year for the Henkel bottle shape2 for
cleansers and various other household products. Last year in the EU there was a series of applications,
oppositions and appeals involving variously Nestle, Mars and
Masterfoods with each vying to register or block trade mark
registration of tube-shaped marks for confectionery such as
Smarties. Smarties were launched in 1937 and named Chocloate Beans,
then renamed Smarties and packed in a tube one year later. (Nestle
tells us that 16,000 Smarties are eaten every minute in the UK
alone!) Also, the Intellectual Property Office of New Zealand has in
recent years allowed trade mark registrations for distinctive
3-dimensional shapes. They include the Dior perfume bottle, Bic pen
shape, Buzzy Beer shape, Reebok sneakers and Toblerone bars.
However it rejected the trapezoid shape of the Kit Kat bar, holding
it was a common geometric form and its ability to distinguish the
Kit Kat bar from other manufacturers' bars was not very
great. What it takes to gain a
legal monopoly A look at some recent decisions sheds light on the legal
requirements in Australia for colours and shapes to be registered
and gain monopoly status. In BP p.l.c v Woolworths
Limited3, Justice Finkelstein of the Federal Court
agreed with Woolworths that the green colour used by BP was not
inherently distinctive of BP's goods and services.
However, he found that based on BP's extensive evidence of use,
that BP's green had acquired distinctiveness as a
dominant part of BP's corporate identity. The general rule applied in Australia to shape and colour
applications is – does the shape or colour have the
capacity to distinguish the product from that of other
persons?4 Is it likely that others trading in similar
goods or services will honestly want to use the shape in a way
which would infringe the applicant's mark?5 Following that rule, a recent decision of the Trade Marks
Registrar rejected an application to register an "ice-cream
cone" shape. It was not capable of distinguishing the goods,
as other traders would legitimately want to use the cone shape for
ice-cream in the course of trade.6 The first full Federal Court decision involving a shape
application was in 2002. It sheds light on what must be proved. The
majority held that the invented shape of a "bug-like
creature" for confectionery was inherently adapted to
distinguish, and hence registrable. It said invented
shapes should be treated the same as invented
words.7 Justice French in the majority expressed
the view that a shape may be registered if the shape is not
dictated by the nature of the product or the need to achieve a
particular technical result. The lesson is that if you have a product or service where the
associated colour or shape is important, and it has an inherent or
acquired distinctiveness, then the mark may well be registerable.
However, our advice is that registration of colours and shapes
should add to other trade marks, not substitute for them. To expand
the monopoly, they should be treated as providing protection
additional to more traditional types of monopoly over names, logos
and other devices, slogans and tag lines. It is also a good idea for brand managers, product developers,
store fit-out and façade architects and designers of all
descriptions to learn the meaning of "get-up". Get-up is
a term used in law to refer to the overall design, look and feel of
a 2-D or 3-D work. (A red Ferrari has plenty of get-up!) 2. Avoid weak registrations A novel trend evident from the Australian Trade Mark Register is
the influx of trade mark registrations for school badges, crests
and shields. In February 2005 there were over 50 applications for
school brands. This is some evidence of the increasing entry by
educational institutions into fields of commerce. But are such
badge, crest or shield registrations worth the cost or effort? As regards the list of products to which they relate, such
registrations are either thin or comprehensive. Either end of the
range can cause problems. Applications at the thin end of the range cite simply the word
"education" on its own as a service in class
418, At the comprehensive end they cite numerous goods
and services eg a recent school application is in 8 classes and
includes beer, kilts and the provision of kayaking
training.9 The range of goods or services descriptions for a trade mark can
indicate weaknesses. Selection of a single word (describing a good
or service) in a single class of the Trade Marks Register can
indicate that not a lot of thought has gone into an application.
It's a jungle out there. It is appropriate then to act on legal
advice. Experienced trade mark lawyers and attorneys learn to
"smell and hunt" for weaknesses in applications and
registrations by competitors who stake their claim despite poor,
little or no advice. It may be too late to correct the position if
a weak registration is exposed as having little value. Monopoly is
then reduced or even lost. Another lesson useful for all applicants is that the majority of
the school applications are for logo or illustration style
trade marks (ie school badges, crests or shields), not
word trade marks (eg ST PAULS GRAMMER SCHOOL). Logo applications often leave gaps through which infringers and
competitors race in. They often provide a lower degree of monopoly
in practice. If someone were to make a copy, and then substantially
alter a logo mark, the ability of the original registration holder
to enforce its monopoly may become arguable or questionable. Even less useful can be label style marks, as are often
registered by wineries for their wine bottle labels. They can
provide a low degree of protection in practice. For experts in law
they can be a sign that brand managers and their advisers are
pretending to do their job. So what is the alternative? It involves smart thinking about
brand architecture. This is an entire topic on its own. Briefly,
there's a lot to be said for having a dual strategy and for
giving a preference to a word mark. A dual strategy could involve
filing a word mark and a separate logo mark. A word mark may in
some cases provide protection that is broader. Paradoxically word
registrations provide protection which is both precise and
"flexible". Copyright often applies to logos and labels
anyway, thus providing a separate legal ground for protection. 3. Finesse your dispute resolution
correspondence Lonely Planet, the international travel guidebook company, has a
portfolio of over 20 registered marks in Australia, most of which
relate to its name and logo. Its difficulty has recently been with
a domain name. The lengthy facts of an October 2004 decision10
reminds us of basic lessons for dispute resolution strategy and
correspondence. Lonely Planet failed in its domain name dispute heard though the
WIPO's (World Intellectual Property Organisation) dispute
resolution system. Basically, an individual unrelated to Lonely Planet obtained the
domain name www.lonelyplanetexchange.com, and was using the
site to sell second-hand traveller's guides including Lonely
Planet travel guidebooks. It seems the site was also using a logo
and font very similar to the registered marks of Lonely Planet. To make a long story short, after various "carrot and
stick" correspondence the parties came to an agreement in May
2002 for the individual to use the domain name, but that he would
include prominent disclaimers that the site was not related to
Lonely Planet on every page, he would cease using the similar logo
and he would not significantly expand his activities to place him
in competition with the official site. Although complied with briefly, Lonely Planet was surprised to
find that several months later the disclaimers were apparently
gone, and the individual had begun to market cheap flights and
other services which also conflicted with the non-book activities
of Lonely Planet. After more correspondence, in mid-2004 Lonely
Planet filed a complaint with the WIPO and requested the transfer
of the domain name. Interestingly, the WIPO panellist's decision acknowledged
that the individual's domain name was confusingly similar and
that it was registered in bad faith. Nonetheless, the decision went in favour of the individual. The
panellist stated that Lonely Planet had not established that what
amounted to a right of use, or agreement between the parties, had
been revoked. This and it seems evidentiary issues permitted the
individual to use the domain name for his website. Lesson? With the benefit of hindsight, it seems Lonely Planet
should have: (1) come down harder earlier; (2) finessed its early
stage dispute resolution strategy; and (3) taken greater care by
tightening its correspondence. Lonelyplanetexchange.com now trades happily on the net with just
the disclaimer that it "operates separately from and has no
commercial, or formal involvement with 'LONELY PLANET'
Publications." 4. Get your application right, the first
time This seemingly obvious tip is taken from a recent decision from
the Registrar, highlighting the need to ensure trade mark
applications are properly rendered and executed. In that decision
an application for the mark SECRENT MENS BUSINESS was approved for
registration. That was good news. The bad news was that the
applicant only then realised that "SECRENT" was a typo,
an error, it should have been SECRET. The Applicant applied to
amend its mark to SECRET MEN'S BUSINESS. The Registrar
refused. The Applicant appealed. At the appeal hearing, the Registrar stated that an application
for the "wrong" mark could only be amended if the
amendment does not substantially affect the identity of the trade
mark as represented in the original trade mark application (see
section 65, Trade Marks Act 1995). In other words, the amended mark
needs to be substantially identical to the original mark. In comparing the two marks side by side, the Registrar decided
that they were significantly different enough for him to refuse the
amendment. Hence, to correct its position the applicant would have
to file a new application thus incurring additional cost,
potentially jeopardising any launch strategy and delaying the date
from when a monopoly legal right might arise. The lesson? Don't rely on "Oops" as an excuse; it
only works sometimes. Get your application right, the first
time. 5. Reward record keeping Recent decisions, sections 41 and 60 of the Trade Marks Act
1995, and the examination and opposition stage of trade marks
provide valuable lessons and guidance for those whose livelihood
depends on brands to improve and reward record keeping
practices. From a trade mark protection perspective, records to keep
permanently include corporate scrapbooks,
discontinued brochures and ads, tax returns showing revenues, draft
product design mock ups, photos, consultant reports and of course
diary and file notes. Commence record keeping at the earliest stage, eg at the
brainstorming stage for a new product name, logo or get-up. The
applicant is then prepared when the records need to be used as
evidence to win early and economically in a trade mark opposition,
dispute or litigation matter. On considering these records, what does the Registrar look at?
Some examples of critical flaws with evidence and records tendered
in recent cases are: 6. Taking on big guys, standing by your
mark A relatively high profile decision in December 2004 involved
Timothy Bull, a trade mark applicant operating in Canberra in the
children's education and entertainment sector. He took on a
large corporation and won. Mr Bull's trade mark application was for the phrase TIM
THE YOWIE MAN. In opposition to it, Cadbury Schweppes cited its own
registered YOWIE mark used on chocolate and related merchandise. It
also argued a large number of grounds for opposition, from
"deceptive similarity" through to Mr Bull having
allegedly "no intention to use the mark". The decision of the Registrar in favour of Mr Bull is a reminder
that regardless of size, in the end an opposition will often come
down to questions of law. Cadbury Schweppes' opposition failed in its entirety.
Cadbury Schweppes also had to pay the costs of the opposition. While rarely acknowledged, in trade mark practice
"bullying" does take place, often by large, resourced,
rich or irrational opponents to trade mark applications. Given
this, it is sometimes cost-effective and smarter to change your
position when there is a real threat. Options include replacing the
application or changing its description of goods or services. The
alternative is to stand by your mark, as did Tim Bull in the YOWIE
case. 7. Lessons learned The above lessons involve common sense. We regularly see
instances where poor planning, decisions and execution by both
applicants and their legal advisers result in: Overall, to build the strength and scope of protection
there's a lot to be said for working with a multi-disciplinary
team capable of thinking in design, marketing and legal terms. 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.
CONTRIBUTOR
Dilanchian Lawyers & Consultants
To print this article, all you need is to be registered or login on Mondaq.com.
FREE News Alerts
Sign Up for our free News Alerts - All the latest articles on your chosen topics condensed into a free bi-weekly email.
Mondaq Webinars
Comparative Guides
Upcoming Events
