Wednesday, May 21, 2014

B & L Whittaker Pty Ltd and Australian Securities and Investments Commission and Anor: What Makes Business Names “Identical”?

A new decision from the Australian Administrative Appeals Tribunal has further confused businesses on issues of similarities around business names. I have written twice previously in this blog about the importance of business names in Australia – a compulsory form of consumer protection quite separate from trade mark registration, which can lead to substantial fines for non-compliance.

B & L Whittaker Pty Ltd (Whittaker) had been conducting business related to concrete pumping under the registered business name ‘Cairns Concrete Pumping’ since May 1999. Recently a competitor, M & M Concrete Pumping Pty Lt (M & M) has set up a similar business. M & M made an online application to the Australian Securities and Investments Commission last February 2013 in an effort to register the business name ‘Cairnscrete Pumping.’

The Commission registered the name Cairnscrete Pumping last April 18, 2013, but the registration was allowed without any human intervention – the decision to register the name was made by the application of a computer programme. Whittaker eventually learned of the Cairnscrete Pumping name being registered, and sought a review of the Commission’s decision on September 18, 2013.

Tuesday, May 13, 2014

Former Football Player Takes Nike to Court Over Nickname Trade mark

Former professional American football player Shawne Merriman has recently commenced litigation in the US against global sporting goods giant Nike, alleging that the sports apparel and footwear company has infringed a trade mark that he owns for the term “Lights Out.”

Merriman is being represented by his own company, Lights Out Holdings LLC, and the case has been filed at the US District Court for the Southern District of California on 14 April 2014.

Merriman got the “Lights Out” nickname during his time in the National Football League, with the term itself originating from his brute strength, which he used to knock opposing players out during a game.

Merriman alleges that he and Nike tried to launch a clothing line that uses the Lights Out brand sometime between 2006 and 2007, but they weren’t able to come to terms. Merriman alleges Nike went ahead and used the brand anyway (the Nike STK Lights Out II Men's Baseball Pants is currently available on Nike's online store.)

Monday, May 12, 2014

Bacardi and Irish Whiskey Maker in a Trade Mark Dispute Over “Untamed/Untameable” Campaign

Avalon, the maker of the Wild Geese Irish whiskey brand, has recently launched a campaign against Bacardi, alleging that the drink maker has infringed its trade mark over its “Untamed” trade mark, as a consequence of a new ad campaign from Bacardi under the banner, “Untameable”.

Avalon’s Untamed brand has been protected as a trade mark in various jurisdictions around the world since 2009, covering whiskey and rum products. The etymology of “Untamed” allegedly refers to the story of the wild geese, the term for the Irish people that were forced to leave Ireland after the Treaty of Limerick in 1691.

Friday, May 9, 2014

Creative Nail Design Blocks Bluesky Chemical’s iShellac Trade Mark Registration

In 2012, Bluesky Chemical Technology filed an Australian trade mark application to register the trade marks ‘Blusky Shellac,’ and ‘iShellac by Bluesky,’ under class 3 goods pertaining to nail polish. The registration was then opposed by Creative Nail Design Inc, which owns the trade mark ‘Shellac’ for class 3 goods pertaining to “nail care preparations; nail enamel; nail hardeners; nail polish; nail varnish and for class 11: ultra violet ray lamps, not for medical purposes.” This was an enormous surprise to me personally as I had understood that “shellacking” described a generic process for varnishing. The etymology of the term is explained below.

Wednesday, May 7, 2014

Tylor v Sevin (2014) AIPC 92-468: Online Copyright Infringement on Stock Photos

By Uberprutser (Own work) [CC-BY-SA-3.0 (], via Wikimedia Commons
It can be surprising to see how little people care (or know) about copyright in images and photos, especially on the internet, with many having no problem reusing images that they saw from another page without first obtaining the permission of the owner. Many users also wrongly believe that simply citing the source and crediting the owner is enough. Google’s Image Search function, which scrapes images from all over the net and presents it to users certainly doesn’t help in this.

A recent case involving American photographer and a travel website owner based in Melbourne underscores the rampant unlicensed use of stock photos online, and how the court might respond to cases in the future.

The complainant in the case, Vincent Khoury Tylor, makes a living out of taking, selling, and licensing of stock photographs. The respondent, Serpin Aydogan Sevin, owns a website that promotes her travel business. The complainant alleged that the respondent used one of his stock photos for her website without obtaining a license or even making an attempt to contact and enquire about copyright ownership.

Instead of asking for an account of profits, the defendant claimed damages and sought an injunction. He also presented evidence of the charges for using his copyright-protected work, based on charges made by Stock Photo broker Getty Images. Mr Tylor emphasised the fact that the images were gallery-quality and were exclusive.

Tuesday, May 6, 2014

FC Refuses to Allow Telstra to Register YELLOW as a Trade Mark

Phone bookIn July 2003, Telstra Corporation applied to register the word ‘YELLOW' as a trade mark after owning various trade marks for the term ‘YELLOW PAGES’ and several variations, including the phrase ‘HELLO YELLOW.’ The Australian Trade Marks Registrar initially approved the registration as it pertains to goods and services related to telephone directory services, but Murphy J of the Federal Court has recently overturned this.

The delegates of the Registrar of Trade Marks initially held that Telstra has extensively traded under various trade marks that are related to the word YELLOW even before filing the application, and as such has demonstrated that the word mark has the inherent ability to distinguish Telstra’s services and goods from other traders, making it valid for registration even though the word itself was not descriptive of Telstra’s telephone directory services.

Sunday, May 4, 2014

Seafolly Pty Limited v Fewstone Pty Ltd – Copyright Infringement in Artistic Works

The Federal Court’s recent ruling in the Seafolly Pty Limited v Fewstone Pty Ltd is interesting because it addresses issues related to imitation, modification, and even deliberate use of a competitor’s designs in the fashion industry, where the practice of using samples and images of existing artwork is commonplace. Some years ago I appeared in an television interview on the habit of Australian companies and their plagiarism of foreign designers - see . And so this decision is an interesting and welcome development.


Both Seafolly and City Beach are designers, manufacturers, and sellers of swimwear and beachwear, with the latter’s products being on the low end of the price spectrum. It also occupies a niche category – that of girls and young women, instead of Seafolly's target market of women of all ages. The two companies’ products are never sold at the same retail outlets.

Seafolly alleges that three of its artworks, or at least substantial parts of them, were reproduced in material form by a corresponding print or embroidery used in manufacturing City Beach beachware garments without permission, licence, or intent to inform, citing the following:

· City Beach’s Rosette print reproduced a substantial part of Seafolly’s English Rose artwork
· City Beach’s Sienna print reproduced a substantial part of Seafolly’s Covent Garden artwork
· City Beach’s Richelle embroidery reproduced a substantial part of Seafolly’s Senorita artwork.

It was also argued that City Beach specifically purchased Seafolly garments bearing the artwork, and gave specific instructions to their designer, 2Chillies, alternatively to their manufacturer, Welon (China) Ltd, suggesting an intent to copy or imitate the artwork.

An email from City Beach to 2Chillies contained various photographs that include Seafolly’s English Rose bikini, along with a request to create a “rose print similar to Seafolly print” and to create the art work in sizes similar to Seafolly’s product. Additionally, 2Chillies repeatedly warned City Beach that the Rosette print was too similar to the English Rose artwork and tried to modify the designs in order to reduce the similarities, but City Beach repeatedly rejected those attempts.

Similarly, in relation to Seafolly's Sienna print, City Beach sending 2Chillies photos of a Seafolly Covent Garden garment and a City Beach dress, along with instructions to provide “direction with flowers and colour,” to which 2Chillies replied with “We have developed this print referring to the picture you sent us and using similar flowers and colours.”

For the Richelle embroidery, City Beach sent a one piece Seafolly Senorita swimsuit to Welon (China) Ltd., and asked for a bandeau with shirred pattern “as per the original” with a note to make it “as close as possible.” A City Beach employee admitted that to providing instructions “to copy the shirring in the [Seafolly] garment.”

Thursday, May 1, 2014

Telstra Penalised for Privacy Breach

A joint investigation conducted by the Office of the Australian Information Commissioner (OAIC) and the Australian Communications and Media Authority (ACMA) found that the country’s largest telco, Telstra, breached the Privacy Act when it exposed the data of around 15775 Telstra customers, including 1257 silent line customers, after failing to provide adequate safety measures in order to protect its customers’ information.

The breach was discovered in 2013, where it was revealed that the private customer data of Telstra’s subscribers, which includes names, telephone numbers and physical addresses from the period 2006 to 2009, can be found simply by searching through Google. The joint investigation found that Telstra failed to take reasonable steps to ensure the security of the personal data they held; failed to take reasonable steps to destroy or permanently de-identify the personal information in their possession, and disclosed personal information for purposes other than those permitted.