Tuesday, December 17, 2013

The Survey Evidence Swing-and-Miss: Australian Postal Corporation v Digital Post Australia

In what should be an entirely unremarkable and unsurprising decision, the Full Federal Court recently ruled unanimously that the marks ‘Digital Post Australia’ and ‘www.digitalpostaustralia.com.au’ were not be deceptively similar to Australia Post’s registered trade marks. The case was first filed on 27 March 2012, with Australia Post alleging infringement of their registered trade mark ‘AUSTRALIA POST’ by Digital Post Australia Pty Ltd. It was also alleged that Digital Post Australia breached the Australian Consumer Law ss 18, 29(1)(a), 29(1)(g) and 29(1)(h) and that Digital Post Australia passed off their service as being associated or endorsed by Australia Post.

Digital Post Australia is advertised as a “free online postal service,” which allowed users to send and receive important mails in a “secure online location.” The main application touted is the ability to receive essential mails such as bills, statements, insurance documents and other confidential correspondence in a secure and private location.

The primary judge accepted evidence that the name was chosen by an external brand consultant as descriptive of a safe, solid digital mailbox service (the Digital Post part) and not because it bore a resemblance to Australia Post’s mark (the Post Australia part). Australia Post bullishly pushed on with an appeal.

The Full Federal Court was stern in its judgment that there is no deception or confusion at play in the case. The Court even referring to Australia’s claims as “without merit,” citing that it is “difficult to imagine that anyone who is competent with computer technology will have any doubt that Digital Post Australia is separate and distinct from Australia Post.”

Monday, December 16, 2013

Cash Converters v Webber (No 2): Res Judicata in Trade Mark Opposition Proceedings

The lamentable practice of some IP practitioners repeatedly filing trade mark applications in order to subvert the opposition process in the hope that an Opponent does not notice a second application has been the subject of scrutiny in proceedings before the Australian Trade Mark Registrar. On 10 December a decision of the Australian Trade Mark Registrar was handed down, applying res judicata to trade mark oppositions. (This is a matter in which I was Counsel for the Opponent.)

Res judicata is a fundamentally important part of the common law process. In an old English case, Re May, Brett MR stated:

“The doctrine of res judicata is not a technical doctrine applicable only to records. It is a very substantial doctrine, and it is one of the most fundamental doctrines of all courts, that there must be an end of litigation, and that the parties have no right of their own accord, after having tried a question between them and obtained a decision of a court, to start that litigation over again on precisely the same questions.”

Sunday, December 15, 2013

The WinnebagoTrade Mark Dispute in Australia: Delay and Spillover Reputation

Back in 1978, Mr Binns and his wife started manufacturing and selling their own line of recreational vehicles (RVs) in Australia under the 'Winnebago' name and logo.

Both the name and logo were copied from an American company that has been manufacturing and selling RVs under the brand name and logo in the USA, the UK, and Canada since 1959.

Binns formed a company called Knott Investments Pty Ltd in 1982, which became the corporate vehicle for the business.

In 1985 Winnebago became aware of Knott's activities in Australia, but did nothing about it until 1992 when both parties came to an agreement about the use of the brand. Knott continued manufacturing and selling its own RVs under the Winnebago brand and even registered the logo as a trade mark in Australia.

Winnebago was aware of Knott's activities, but did nothing to prevent the marks from being registered and used in Australia. The rationale for this was that they were not selling their products into Australia and had no plans to do so. A letter to their Australian lawyers also revealed that Winnebago were expecting Binns to go out of business, as he was suffering from financial difficulties.

Unfortunately for Winnebago, Knott didn't go under and continued making and selling Winnebago-branded RVs in Australia.

In 2010 the US-based Winnebago decided to enter the Australian market. Winnebago commenced proceedings, alleging misleading or deceptive conduct as well as passing off in an effort to get Knott's registration for the Winnebago name and logo revoked.

Thursday, December 12, 2013

Trade Marks for Real Estate Developments in Australia – the hidden implications in searching and registration

Common law searches for businesses in the real estate sector often miss statutory databases.

Place names are governed internationally by the UN Group of Experts of Geographic Names (UNGEGN). Australia sits within UNGEGN’s Asia South-east Pacific South-west Division, represented by the Committee for Geographic Names of Australasia (CGNA), part of the Intergovernmental Committee on Surveying & Mapping.

The CGNA forms policies and guidelines around the naming of places in Australia and New Zealand. Place names are collated in the CGNA Gazetteer of Australia.

Within Western Australia, the governmental authority called Landgate has its Geographic Names Committee (GNC). Through the Land Administration Act 1997 (WA), Land Administration Regulations 1998 (WA) and the Instrument of Delegations, the Chairman and the Executive Officer of the GNC have the authority to approve naming submissions.

Landgate’s rules on the naming of places are contained in its document entitled “Policies and Standards for Geographical Naming in Western Australia” - http://www.landgate.wa.gov.au/docvault.nsf/web/PS_LD/$FILE/GNCommittee.pdf (the Policy). The Policy is a well-considered document, apparently taking into account the considerations of orthography developed from the UNGEGN, the CGNA and GNC.

Paragraphs 2.8 and 18 of the Policy says:

Wednesday, December 11, 2013

Prosecco GI Registration Denied in Australia

Waiter pouring Zardetto sparkling Prosecco

The Winemakers Federation of Australia’s objection to the European Commission’s move to register the Italian GI Prosecco as an Australian GI (Geographical Indication) was recently upheld by the Australian Deputy Registrar of Trade Marks, under the basis that the term has been extensively used (and is still being used) in Australia as a term for ‘a variety of grapes.’

The European Union is still actively campaigning to improve the protection of geographical indications internationally, establishing distinct legislation to protect GIs in the wine and spirits industry, among others. Some of the more famous EU GIs that have been protected include Champagne, Port and Sherry, the local variations of which have since been renamed to sparkling wine, tawny and apera, respectively.

The European Commission’s main argument is that Australian winemakers’ use of the term ‘Prosecco’ for a variety of grapes will confuse consumers. The EC claimed Australian consumers have an inherent understanding of the term as denoting geographic location instead of variety, citing the marketing of Prosecco by reference to Italy and Prosecco’s Italian origin itself.

Tuesday, October 29, 2013

Testing Distinctiveness for Trade Marks in Modena v Cantarella

Coffe time
The coffee-drinking public is familiar with various Italian words that are related to their favorite beverage, such as cappuccino, espresso, latte, and probably even the less popular terms like cinque stelle and oro. In Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110, the Full Court considered whether such terms are capable of being registered as trade marks, and if the average coffee consumer's knowledge of what the words mean matter.

In Modena v Cantarella had "Cinque Stelle" and "Oro" both registered as trade marks in class 30 for coffee and related items (with both marks being registered since 2000 and 2001, respectively.) Cantarella sued Modena for infringement of the trade marks, misleading and deceptive conduct, misrepresentation, and passing off.

Modena's Defence: section 122(1)(b)(i) of the Trade Marks Act

In its defence, Modena claimed that use of the words "Oro" and "Cinque Stelle" all fell within the scope of protection under section 122(1)(b)(i) of the Trade Marks Act because the words were not being used as trade marks, but as indicators of the characteristics of their goods ("Oro" and "Cinque Stelle" translate into English as "Gold" and "5-Star", respectively).

Monday, October 28, 2013

Trade Marks and Domain Names: the importance of notoriety

Two Australian trade mark disputes involving domain names this year are worth noting, primarily because the outcomes were different despite the two cases having similarities at first glance.

The first one is REA Group Ltd v Real Estate 1 Ltd. The key issue was confusion between REA Group's very well-known realestate.com.au and Real One's realeastate1.com.au domains. The court accepted that Real One's logo did not "pass off" REA Group's logo or infringe on their trademark. You can check the two companies logo below for comparison:

Top: Real One's logo. Bottom: REA Group's logo

REA Group's trade mark (TM No 1478263)

However, the court found that Real One's URL, when used in certain types of ads like this:

real one ad

...constituted trade mark infringement. In Bromberg J's own words:

In my view, the display of the term “realestate1.com.au” in the heading of a sponsored link would have been regarded by many consumers to be the trading and domain name of the business whose link it was. One of the central distinguishing features of REA’s realestate.com.au trade marks is the idea that the term “realestate.com.au” is both a brand name and a domain name at the same time. When Real Estate 1 used “realestate1.com.au” as a trading name, it took up that precise idea. In that context consumers are likely to pay substantive attention to “.com.au” because it serves the function of identifying the brand whose domain name is also being used as a brand. The whole of the domain name is likely to be read or at least scanned. In a circumstance such as that, there was in my view, a real danger of confusion on the part of a consumer familiar with REA’s realestate.com.au trade marks. That principally arises because in a scanning process of the kind which can occur on a search results page, the “1”, which is not very distinct in the context of a domain name in ordinary type face, is likely to be missed by some consumers.

Sunday, October 27, 2013

Zynga Wins Over Mattel Over 3D Scrabble Tile Dispute

A few months ago, American toy manufacturing company Mattel, Inc. claimed that social media game developer Zynga had infringed four trade marks that were registered as far back as 2000, with regard to ‘computer game adaptations of board games’ in Class 9, ‘board games’ in Class 28 and ‘organisation of competitions and exhibitions, all relating to board games’ in Class 41. The marks were described as “a three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10”.

Zynga filed a counterclaim for the invalidity of Mattel's registration, citing that the mark cannot be registered under Article 2 of the European Trade Mark Directive. Article 2 of the Trade Mark Directive requires a mark to be a "sign" and capable of "being represented graphically," in order to qualify for registration. Zynga submitted that four variations of Mattel's registered mark demonstrated that it is not a single sign:


Saturday, October 26, 2013

Typeface / Law Interface

Difference Between a Font and a Typeface

This is a frequent source of confusion among people because they are used interchangeably even by industry professionals. But, technically speaking, a font refers to the physical embodiment of the print such as the metal or wooden blocks - or nowadays, a program or computer file used to inform your printer or display renderer how to show a letter or a character. A typeface, on the other hand, is a set of numbers, letters, and other symbols with certain repeating design elements. A font is what you use: a typeface is what you see.

For instance, while most people refer to the dreaded “Comic Sans” as a font, it is actually a typeface. The file Comic_Sans.ttf, which your computer uses to tell the display or printer what the typeface looks like, is the font.

Protection Afforded to Type Faces

In the United Kingdom, Germany, and France, owners of typefaces have, for 16 years:
a. the right to prohibit the making, without consent, of any reproduction, whether identical or slightly modified, intended to provide means for composing texts by any graphical technique, irrespective of the technical means or material used; and

b. the right to prohibit the commercial distribution or importation of such reproductions without consent.

Wednesday, October 23, 2013

Clive Palmer and the Titanic Brand

Eccentric Australian billionaire #ClivePalmer is well-known for his obsession with the sunken ocean liner, RMS Titanic. This obsession is manifesting itself in not just a desire to re-make James Cameron's film about the ship. Palmer is quietly acquiring the intellectual property around the entire line of ships associated with the Titanic. He currently has 38 trade mark applications pending in Australia, and 17 of these are either related to the Titanic (such as its sister ships, Gigantic, Britannic, and Olympic) or its original owner, Blue Star Line.

Tuesday, October 15, 2013

Louis Vuitton Malletier v Sonya Valentine: When is a Well-Known Mark Not Well-Known Enough?

The Federal Court of Australia's recent ruling in Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933is on the face of it simply a dispute between a trade mark owner and a counterfeiter. But it has important implications for companies which value their “well-known marks” as defined in the TRIPs Agreement.

Louis Vuitton was established in 1854 and is one of the world’s leading luxury goods companies. It is without doubt also a brand which is very extensively counterfeited. In this case, the Respondent used several brand elements which were suggestive of both Louis Vuitton’s brands, but also, as noted by the judge, Louis V of France (although the court noted that “the monarch appears to have been a young man of no particular distinction”.

Louis Vuitton claimed that Sonya Valentine had infringed Louis Vuitton’s trade marks and engaged in misleading and deceptive conduct and unfair practices under the Australian Consumer Law, specifically with regard to the importation and sale of sunglasses that bear the mark "LOUIS V" and a flower symbol that bears a striking resemblance to Louis Vuitton's flower symbol. You can check the image below for comparison (the left image is a sample of the sunglasses in question, the right is Louis Vuitton's flower symbol):


Wednesday, October 9, 2013

Trade Marks and the European Tobacco Products Directive

Australia's introduction of plain packaging legislation seems to be a concept which has found favour in Europe. Several notable intellectual property industry groups have recently published a joint statement addressing the European Commission's recent proposed revisions to the Tobacco Products Directive. The concern is that the stringent measures being proposed may undermine trade mark rights if adopted.

The proposed amendments to the Tobacco Products Directive consist of a number of strengthened rules regarding the manufacture, presentation, and sale of tobacco products, as well as products that were not regulated in the past but are related to tobacco in function, such as e-cigarettes and herbal products that are meant to be smoked. The proposed requirements include significantly enlarged health warnings.

Tuesday, October 8, 2013

adidas AG v Pacific Brands Footwear Pty Ltd

Adidas Conductor High Olympics 1988 re-edition sneakersThe Federal Court of Australia recently delivered a ruling in the adidas AG v Pacific Brands Footwear Pty Ltd. In this case, adidas filed a suit against Pacific Brands over infringement of adidas' trade mark, the '3 stripes' design. This design also serves as adidas' logo. adidas claimed shoe designs used Pacific Brands that bore 4 stripes in the same location on shoes infringed adidas' trade marks.

adidas claimed two registered trade marks were infringed:

a. TM No 131325, which dates as far back as March 13, 1957, applying to sports shoes and special sports shoes (including football boots, runners, training shoes and other sporting footwear in the same class). This mark is made up of 3 stripes of a color that is different from the color of the shoes in which they are applied, starting from the area of lacing all the way to the vicinity of the instep.

b. TM No 924921, registered in July 17, 2002 and applies to footwear, including sports and casual. The trade mark is described as 3 stripes that form a contrast to the basic colour of the shoes.

Pacific Brands' Defence
Pacific Brands' main argument was that their use of the four stripes on their shoes were meant for design or decorative purposes, and to serve as an indication that the shoe is meant for "sports use" (the use of stripes on sports shoes is widespread, as stripes are commonly used to indicate speed or velocity in the context of graphic design.)

It was also noted that adidas and Pacific Brands' shoes are sold in different types of stores and belong to different price categories.

adidas responded by arguing that shoe manufacturers commonly use the side of the shoe as a place for marks that serve as a badge of origin. The best known of these is Nike's 'swoosh' logo.

Deceptive Similarities

The court accepted that Pacific Brands' use of the stripes are decorative, but the stripes nonetheless served the function of a trade mark.

While the presence of 4 stripes instead of 3 was not an exact infringement, it still had the tendency to confuse or deceive due to inherent similarities. In the words of Justice Robertson:

Thursday, September 5, 2013

Secret Use and Patents: Issues for the Petroleum Industry in Western Australia

It is well-known that the subject technology of a patent application must be novel to obtain patent protection.

This is why if a business is to disclose details of its technology before filing a provisional patent application, it must be disclosed under the terms of a confidentiality agreement or non-disclosure agreement. Confidentiality agreements help preserve the essential novelty in a patent.

However, there is another important issue regarding ‘secret use’. Subparagraph 18(1)(d) of the Australian Patents Act 1990 states that:
“an invention is patentable, so far as is claimed in any claim, if it was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person…”

The prevailing authority on secret use in Australia is the Full Federal Court case of Azuko v Old Digger (2001) 52 IPR 75. It was held that the relevant question of whether secret use has occurred before the priority date (that is, the all-important date of filing the patent application) is whether certain commercial acts done before the priority date constitute a de facto extension of the patent monopoly. An extension of the monopoly usually requires the patentee to have “reaped a commercial benefit”.

Tuesday, September 3, 2013

Chinese Military Hackers Target Commercial Intellectual Property

Earlier this year, Virginia-based cyber security firm Mandiant released a 60-page report pointing to a specific Chinese military unit as the perpetrators of one of the largest cyber attacks on US infrastructure and corporations to date.

Mandiant alleges that the attacks were directed mainly at 115 US targets, with twenty coming from different industrial sectors such as aerospace, energy, transportation, financial, and even legal institutions. Mandiant's report points to a 12-story office building in Shanghai as the base of operations for Unit 61398, which they dubbed as the “Comment Crew” or “Shanghai Group.” Mandiant said that since 2006, it has observed attacks from this unit against at least 141 companies spanning 20 major industries.

Image Source: Google Earth
Despite China's dismissal of the reports as “groundless” and “irresponsible”, many security experts continue to find the Comment Crews' actions as pointing towards government sponsorship, with one of the most popular cases being the successful hacking of Coca-Cola. The attack was done through a 'spearphishing' email (a more targeted version of phishing emails, which trick victims into entering their private information through a fake link on an email masquerading as belonging to a personal contact) which had been sent to a Coca-Cola executive. The attack was initiated after Coca-Cola has acquired a large Chinese company, and experts suggest that it was done for the purpose of uncovering negotiation strategies and other critical information related to the acquisition.

Sunday, September 1, 2013

Marvel's Web Blaster Toy: Are Royalties Payable in a Patent License After a Patent has Expired?

In May 1990, inventor Stephen Kimble filed an application to patent a toy designed to allow a person to shoot "webbing" from the palm of his hand using a hidden pressurized container full of string foam. The container is incorporated into a glove. Kimble secured the patent in the US (US Patent No 5.072,856). (The patent attorney who drafted the specification amusingly included the following in the description of the prior art: All kinds of shooting toys have been designed and built over time for the amusement of children and adults alike. Water is normally the medium used as projectile and water guns are the most common type of toy utilized for this purpose. They come in the shape of hand guns, rifles, machine guns, and other configurations allowing the player to squirt water from various parts, often hidden, of his or her body. The mind boggles.)

Kimble offered his design to Marvel Enterprises, Inc. Marvel's Spider-Man character has the ability to shoot webbing from the palm of his hands, and so Marvel was an obvious partner in any exploitation of the invention. Indeed, it was clear from the patent specification that this was what Kimble had in mind: “Accordingly, this invention creates a toy that makes it possible for a player to act like a spider person by shooting webs from the palm of his or her hand.”

Marvel said to Kimble that they would consider his designs for the web-shooting toy and that he would receive royalties if they ever make a toy out of it. However, Marvel then launched a Spider-Man toy called the "Web Blaster." The toy bears similarities to Kimble's designs.

More Military Patent Litigation: How the Rights to the Phalanx CIWSWere Under Challenge

Last April, Waltham, Mass.-based Raytheon has fulfilled the second of its three part contract with the Royal Australian Navy, in which the Phalanx Close-In Weapons Systems on the RAN's various vessels will be upgraded to the Block 1B configuration. This should improve their efficiency in approaching and nearby targets, while also reducing the manpower required for maintenance of the CIWS.

The Phalanx CIWS was originally designed and developed by General Dynamics in the 70s mainly for use by the Royal Navy and the United States Navy on several of their surface combat ships. The CIWS on the U.S. Navy side were originally nicknamed 'R2-D2,' due to the barrel-shaped dome bearing a resemblance to the popular “Star Wars” droid. On the Royal Navy side, it was referred to as 'Daleks,' after the similarly dome-shaped robotic alien creatures from the UK sci-fi series “Doctor Who”.

Phalanx CIWS - ID 060605-N-6363M-004