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: