Monday, April 13, 2015

The Batmobile, Kryptonite and Duff Beer: Brand development and famous ancillary indicia

Using established ancillary indicia – things associated with a particular character, laden with goodwill, is a clever way of projecting a brand message. The hard work has already been done, after all: an audience recognises the brand immediately, and does not need to be taught what the brand means.

A short list of ancillary indicia laden with goodwill might include:

a. The invisible plane (Wonder Woman) (USA);
b. The TARDIS (Dr Who) (UK);
c. The bamboo-copter (Doraemon) (Japan);
d. The Law-Giver (Judge Dredd) (UK);
e. The Death Star (Star Wars) (US).

Each of these items carry with them significant reputation in each of their respective jurisdictions (and beyond) so as to be potentially protected as characters of themselves, and be capable of generating revenue for their respective owners through licensing.

But brand owners often do not like it when someone uses such ancillary indicia without premission.

In 2013, Warner Bros. commenced proceedings against California resident Mark Towle, who is the owner and operator of a car customizing service named Gotham Garage.

Towle’s company specialises in custom replicas of automobiles that are featured in films and TV shows, and it owes its name to one of its most popular works: Batmobile replicas.

Gotham Garage received a lot of attention for creating exceptional replicas of the Batmobile that was used in the iconic Batman TV series from the 1960s. Gotham Garage charged USD90,000 for each vehicle.

Towle’s defence was that the Batmobile is not protected by copyright law. This was because as a car, under U.S. copyright law, articles that have a utilitarian function (such as lamps, bathroom sinks, computer monitors, cars) cannot be protected bycopyright as a whole. Towle’s argument was that protection is only afforded to features that allow the articles to be “identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Towle also argued that a ruling in favor of Warner Bros. would set an unfavourable precedent, in encouraging car makers such as Toyota, Ford, Ferrarri, and Honda to publish comic books so as to obtain protection for articles that are not protectable.

The Court found for Warner Bros., citing that the Batmobile is protected by copyright because it is a character in and of itself, existing in both “two-and three-dimensional forms,” with its existence in three dimensional form a “consequence of the Batmobile’s portrayal in the 1989 live motion film and 1966 Television series.”

Wednesday, March 25, 2015

Collaborative Intellectual Property Pooling: Neuron Completes Flight Test Campaign in France

The French Directorate General of Armaments (DGA) and Dassault Aviation have successfully completed the flight test campaign for the Neuron unmanned combat air vehicle (UCAV) in Istres, France. The demonstration consisted of a series of flights along with presentation of the UCAV’s reliability and efficiency. According to Dassault’s press release, the Neuron managed to show exceptional availability and reliability during the trials.

The Neuron UCAV is a stealth combat drone developed as the final phase in Dassault Aviation’s LOGIDUC (Logique de Développement d'UCAV or "Unmanned Combat Aerial Vehicle development solution"). Prime contractors Alenia, Dassault and Saab have brought together their knowhow in flying experimental unmanned vehicles. It is a European program expressly designed to achieve technical parity with the United States. The other aims of the program are to:

Wednesday, February 25, 2015

The APP STORE TM in Australia : Expert evidence as argument and the utility of survey evidence in trade mark registrations

Apple tried to file a trademark registration for the name APP STORE in Australia back in 2008.

The company has famously been using the term for the digital distribution marketplace exclusive to their devices/operating systems, and tried to get the name registered under Classes 35 (Advertising; business management; business administration; office functions), 38 (Telecommunications.), and 42(Design and development of computer hardware and software.).

The application was initially accepted for registration, but IP Australia submitted a late objection for the Class 35 registration, citing that the mark is not distinctive enough to fall within the scope of section 41(5) of the unamended Trade Marks Act 1995 (Act).

Essentially, while the term app store (a store for Apps) could apply to Apple’s digital marketplace, the term could also apply to other similar services such as Google’s Google Play Store.

Apple wasn’t happy with the decision. It filed an appeal, providing testimonials from a number of witnesses that consist of Apple employees and a professor of linguistics (Harris), along with survey evidence from the director of a market and social research company (Newspoll survey).

Apple argued:

Monday, February 2, 2015

Use of R Symbol: A Nasty Export Risk

The Registered Trademark Symbol or ® means that the brand that it is attached to is a service or trade mark that has been registered with a national trade mark office.

Like the trade mark (™) symbol, use of this symbol is not a mandatory requirement, but it is illegal in some countries to use the symbol if the preceding mark is not officially registered with tat particular national trade mark office.

Some countries consider usage of the R symbol on unregistered marks to be an offense subject to fines but there are also countries like South Korea, Russia, India, Japan, Egypt, and Libya where violators are subject to imprisonment.

The symbol ™ denotes that a mark is a trade mark – it may or may not be registered. The ® symbol denotes that the mark is registered in a national trade mark office. Some countries use different variations. Spain and Portugal, for instance, uses MR while Germany uses WZ. In Canada, the French counterpart to ® is MD (marque déposée) and the counterpart to TM is MC (marque de commerce).

It is important to deal with the R symbol on a per country basis due to the differences in how they treat the symbol. The major issue with that, as with all jurisdictional labelling requirements, is that the exporter doesn’t always know or have control over where the products will end up. Third parties could ship the products to different countries.

Wednesday, January 21, 2015

ICANN Holds Program Auction to Resolve String Contention for .BABY and .MLS

Last December 2014, ICANN held another new gTLD Program Auction via their authorized auction service provider, Power Auctions LLC. The auction came about because several applicants failed to resolve a string contention for the new gTLDs .BABY and .MLS through other preferred means (either direct negotiation, community priority evaluation, or through a private auction without ICANN’s participation.)

The bidding or the .BABY gTLD was won by Johnson & Johnson Services, Inc for $3,088,888. Given that the company is well-known for a wide range of products that include infant and toddler-care, it is understandable why they would pay such a hefty amount for the gTLD. Johnson & Johnson Services, Inc beat 5 other applicants.

Wednesday, January 7, 2015

The double-edged sword of notoriety: Court Dismisses Coca-Cola Claim Against Pepsico Over Bottle Shape Infringement

Coca-Cola have been using a “Contour” shape bottle for many years, for which they have already registered several trade mark registrations, including shape trade mark registrations.

In October 2009, Frucor Soft Drinks Limited, the bottler and distributor of PepsiCo products in New Zealand, launched a new 300ml bottle on the market. Frucor dubbed this the “Carolina” bottle. The new Carolina bottle design was intended for PepsiCo’s main line of soft drinks, such as Pepsi, Pepsi Max and 7UP.

The new bottle design wasn’t promoted or advertised and were only released to the market on a small scale, but Coca-Cola took notice and saw similarities between the Carolina bottle and their own Contour bottle:

Tuesday, January 6, 2015

Hugo Boss v Sasalili Oxford Fia: The Strategy of Policing Luxury Brands

The Federal Court of Australia has recently awarded both compensatory and additional damages in the Hugo Boss Trade Mark Management GmbH & Co Kg v Sasalili Oxford Fia case. Exemplary damages were introduced into the Australian Trade Marks Act in April 2013.

The applicant in this case was Hugo Boss Trade Mark Management GmbH & Co Kg, the trade mark vehicle of the famous German luxury fashion and style house. The respondent was Sasalili Oxford Fia, which has been manufacturing and offering a range of men’s, children’s, and women’s apparel bearing the mark BOSSIT, with the logo bearing a resemblance to Hugo Boss’ logo.

The BOSSIT-branded items were being sold primarily online (through a Facebook page serving as an online store) and were also sold in several local markets such as the Fairfield and Blacktown markets.

When the case first went to trial in early 2014, the Court had ordered the respondents to pay the applicant for infringing the Hugo Boss trade mark. Applicants successful on the issue of liability can elect to seek damages or an account of profits. The applicant chose damages. This is hardly unusual: respondents often claim that their expenses are such that they made no profit. An account of profits also excludes a claim for exemplary damages, which is largely a discretionary award.

Middleton J awarded additional damages after being presented evidence that the respondents continued selling the infringing products even after receiving the applicant’s cease and desist letter. Additionally, His Honour also took into account that the respondent’s products were of inferior quality, manufactured and sold through means that Hugo Boss would never have done themselves, much less approved of. The final compensatory damages awarded by the courts is $20,000 for infringement of Hugo Boss’ trade marks, plus $10,000 and $15,223.53 additional damages and costs of proceedings incurred by the applicant, respectively.

The Court considered the award of damages fair and a good deterrent to entities that would seek to engage in infringing activities in the Australian marketplace. These sort of skirmishes with small infringers inevitably cost more than is recovered, but are generally considered necessary by luxury brands to deter others.

This matter reminds me of a case I was involved in when I worked in Hong Kong: Montres Rolex S.A. v. Tsoi Chi Li [2001] HKCFI 996; HCMP 361/2001 (21 September 2001). In that case, the Defendant breached orders of the court relating to the cessation of his sale of fake Roles watches. The defendant was sentenced to three months’ imprisonment. On the issue of costs, the Court said: