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.